Patent Case Study - "Two companies with two very different IP strategies"

Intellectual Property Teaching KitIP Advanced Part IPatents, utility models and designs

IP Advanced Part IPatents, utility models and designs

Part of the IP Teaching Kit

2 EPO/OHIM Intellectual Property Teaching Kit – IP Advanced Part I

EPO/OHIM Intellectual Property Teaching Kit – IP Advanced Part I 3

Table of contents

Content Slide Page

Introduction 4

About IP Advanced Part I 5

IP Advanced Part I 1 6

PATENTS

1 Patents 9

Slides 2 – 37 11

2 Patent case study 85

Slides 38 – 50 87

3 Patent exercises 115

Slides 51 – 79 117

UTILITY MODELS

4 Utility models 177

Slides 80 – 104 179

DESIGNS

5 Designs 231

Slides 105 – 129 233

6 Design case study 285

Slides 130 – 147 287

7 Design exercise 325

Slides 148 – 168 327

Terms of use 370

Impressum 371



Intellectual property reaches into everyone's daily lives. A basic awareness and understanding of IP is therefore essential for today’s university students, who are the engineers, researchers, lawyers, politicians and managers of tomorrow.

It is vital that students become acquainted with elementary aspects of IP, so that they can benefit from it fully in whatever career they eventually pursue. Students and universities should be aware too of how they can utilise the incomparable wealth of technical and commercial information to be found in IP documentation, and understand the need for universities to convert their research into IP rights, manage their IP portfolios and engage in technology transfer to industrial partners for value creation and the benefit of society as a whole.

Last but not least, students and universities should be aware of the consequences of failing to protect IP assets correctly, including the risk of reverse engineering, blatant copying and even industrial espionage.

This is where the IP Teaching Kit comes in. Produced by the European Patent Academy in association with the Academy of the EU's Office for the Harmonization of the Internal Market, the IPTK is a collection of materials - including PowerPoint slides, speaking notes and background information - which can be used to put together lectures and presentations on all kinds of IP,

Introduction

including patents, utility models, trade marks, copyright, designs and trade secrets. The materials can be tailored to the background of the students (science or engineering, business or law), their knowledge of the topic, the time available and their learning objectives.

IP Advanced Part I follows on from the introductory IP Basics. It contains the tools and information you need to deliver more in-depth lectures on the main aspects of patents, utility models and designs.

With the IP Teaching Kit you have at your disposal an extensive set of freely accessible, professional teaching materials which represents one of the most comprehensive IP teaching resources in the world.


TMview, TM class, DesignView, eSearch Plus

About IP Advanced Part I

IP Advanced Part I is part of the Intellectual Property Teaching Kit (IPTK). It has been designed for teachers of students with little prior knowledge of intellectual property (IP), in order to provide them with advanced teaching material about patents, utility models and designs.

In addition to the main presentations, IP Advanced Part I contains case studies and exercises on patents and designs that demonstrate their use in the real world.

IP Advanced Part I consists of ready-made PowerPoint slides with speaking notes and additional background information. The speaking notes can be read out as they stand. The background information provides additional details which will help you prepare for the more advanced questions that students might have. It is not intended for this information to be included in the lecture.

For online access to the extensive IPTK collection, plus updates and further learning opportunities, go to www.epo.org/learning-events.html, where you will also fi nd a tutorial for teachers and lecturers.

IP Teaching Kit

IP Basics IP Advanced IP Search Tools

IP ManagementEspacenet,

European Patent Register

Part II:Trade marks,

trade secrets & copyright

TMview, TM class, DesignView, eSearch Plus

IP Teaching Kit

IP Basics IP Advanced IP Search Tools

IP ManagementEspacenet,

European Patent Register

Part II:Trade marks,


Patents, utility models, designs, trade marks,


Part I:Patents,

utility models &designs


Slide 1 IP Advanced Part I

Title slide



1 Patents

10 EPO/OHIM Intellectual Property Teaching Kit – IP Advanced Part I Patents


PatentsList of slides

Slide 2 PatentsSlide 3 Patents are all around us

(optional)Slide 4 The patent system yesterday

and today (optional)Slide 5 The role of the patent systemSlide 6 Patents as a social contractSlide 7 Rights conferred by patentsSlide 8 What is a patent? (animated slide)Slide 9 What do patent documents look like?Slide 10 What does the description contain?

(optional)Slide 11 What can and can’t be patented? (animated slide)Slide 12 When is an invention "new"?Slide 13 Do’s and don’ts for safeguarding

noveltySlide 14 When is an invention "inventive"?Slide 15 Assessing novelty (animated slide)Slide 16 Assessing inventive step (I)

(animated slide)Slide 17 Assessing inventive step (II)

(animated slide)Slide 18 How to obtain patent protection

in Europe (options 1 and 2) (animated slide)

Slide 19 Key facts about the unitary patentSlide 20 Key facts about the Unified Patent

Court

Slide 21 How to obtain patent protection in Europe (option 3)

Slide 22 The grant procedure before the EPO (animated slide)Slide 23 What can happen after a European

patent has been granted?Slide 24 What is infringement?Slide 25 How is infringement determined? (I)

(optional, animated slide)Slide 26 How is infringement determined? (II)

(optional, animated slide)Slide 27 Advantages and disadvantages of

getting a patentSlide 28 Alternatives to patentingSlide 29 What to consider before filing an

application (animated slide)Slide 30 What might happen if I decide not to

apply for a patent? (animated slide)Slide 31 How patents are usedSlide 32 The value of European patents

(optional)Slide 33 Re-inventing the wheel – literallySlide 34 Solutions found in patent documents (animated slide)Slide 35 Searching for patents is easySlide 36 … but a basic knowledge of patent

jargon is needed (optional, animated slide)

Slide 37 Quiz (optional, animated slide)

Patents


Slide 2 Patents

The following slides provide a basic introduction to patents

EPO/OHIM Intellectual Property Teaching Kit – IP Advanced Part I 13Patents


Slide 3 Patents are all around us (optional)

The aim of this slide is to show students that patents are relevant in almost every walk of life, not just in high-tech industries. There are a huge number of patents covering almost every product you can buy, so patents are of interest to everyone. This slide shows the number of patents in three different technical fields.

1. Superconductors Patent applications are filed for breakthrough innovations. The chart shows applications relating to superconductors, a class of materials that conduct electric current without any loss. The discovery of superconductivity dates back to 1911, when it was first observed by a Dutch physicist. In 1986, a breakthrough discovery was made by Alexander Müller and Georg Bednorz at an IBM laboratory in Switzerland. They created a ceramic compound that superconducted at the highest temperature then known: 30 K (-243°C). What made this discovery so remarkable was that ceramics are normally insulators. A year later, Müller and Bednorz received the Nobel Prize in Physics. A number of patent applications resulted from their research activities. Their discovery opened up the possibility of real applications for superconductors.

As you can see, their discovery was followed by a huge increase in patent applications in the field and a phase of high inventive activity. However, even today superconductors are still not a mass-market product and most of these patents did not turn out to be valuable at all. It is no wonder, therefore, that research interest has decreased and the number of patent applications for superconductors has fallen almost to the level it was at before the discovery of high-temperature superconductivity.

2. Bicycles Many patent applications relate to simple inventions that concern things we use every day. You might think that bicycle technology is quite old and that there won't be many bicycle patents today, but the opposite is true. In fact, during the last decade more patents have been applied for for inventions relating to bicycle technology than for superconductor technology! Incidentally, more than 130 million bicycles are produced every year worldwide, including 25 million electric bikes, so no wonder there are a large number of companies in fierce competition in this market. By way of comparison, the number of cars manufactured per year is around 50 million (2012).

3. Toothbrushes Even seemingly trivial things such as the opening of a tetra pack, a razor blade or a toothbrush may be covered by patents. In 2012, more than 2 000 patent documents relating to toothbrushes were published. Colgate's largest production site (Colgate Sanxiao in China, 2013), for example, makes 1 500 million toothbrushes a year, which is around one tenth of the total global toothbrush production.

Despite the large number of patents, no company has a monopoly on bicycles or toothbrushes – or even on superconductors. Instead, many companies have small proprietary technologies that make their bicycles, toothbrushes or superconductors a little bit better than those of the competition and thus help them to stay competitive.

Data sourceThe chart shows the number of patent documents found on Espacenet, the free worldwide patent database at www.espacenet.com, for the keywords 'bicycle? or bike? or bicyclette? or Fahrrad?? or Fahrräder?', 'toothbrush?? or Zahnbürste? or brosse? à dents' and 'superconduct* or supraleit* or supraconduct*'.


There are a huge number of patents covering

almost every product you can buy, so patents

are of interest to everyone.

Here are some examples of patents in three

different technical domains.

The first is superconductors. In 1987 the

Nobel Prize in Physics was awarded for high-

temperature superconductors, which had

been discovered in 1986. Patent applications

followed, along with a phase of high inventive

activity in this field. Most of these patents

turned out to have very little value. Research

interest has since decreased, and the number

of patent applications for superconductors has

fallen.

The second example is bicycles. Many patents

concern simple inventions used every day.

During the last ten years, more patents

have been applied for in the field of bicycle

technology than in superconductor technology.

More than 130 million bicycles are sold every

year. There are a large number of companies in

fierce competition in this market.

The third example is toothbrushes. This is

another example of simple things covered

by patents. In 2012, more than 2 000 patents

relating to toothbrushes were published. One

plant alone reportedly manufactures 1 500

million toothbrushes a year, which is around a

tenth of total global production.

Despite the high number of patents, no one

company has a monopoly on bicycles or

toothbrushes.

Instead, many companies have small

proprietary technologies that make their

bicycles or toothbrushes a little bit better than

others and thus help them to stay competitive.


Slide 4 The patent system yesterday and today (optional)

The first account we have of a formal patent law dates back to AD 1474, when the Senate of Venice introduced a law aimed at promoting innovation and protecting the honour of inventors. Venice is believed to have issued about 600 patents (approximately five patents a year) from 1474 to 1594, the year when Galileo was granted a patent.

Galileo was granted a patent on a water pump he invented. He did not provide the details of his invention before the patent was granted; he merely stated its prospective use and performance. He was given the privilege of using the invention exclusively, provided he made the device within a year. The requirement to actually make the invention in order not to lose the patent was common in the Venetian patent system.

The text of Galileo's patent reads as follows:

"That by the authority of this Council is granted to Mr Galileo Galilei that for the space of the next twenty years others than him or his agents are not allowed in the city or any place in our state to make, have made, or, if made elsewhere, to use the device invented by him for raising water and irrigating fields, by which with the motion of only one horse twenty buckets of water that are contained in it run out continuously; under pains of losing the devices which will go to the supplicant, and 300 ducats, a third of which will be for the accuser, a third for the magistrate who undertakes the prosecution, and a third for our Arsenal; the supplicant being obligated, however, to have made known this new type of device within one year, and that it has not been invented or recorded by others, and that a patent has not been granted [on the same device] to others; otherwise the present grant will be void."

The main goals of today's patent system are to promote innovation (by offering protection to the results of the inventive work) and to provide an incentive to share knowledge (by requiring the publishing of the invention's details when a patent is sought), so that people can learn from each other. This dual nature of the patent system is sometimes referred to as a contract between society - which gets the knowledge - and the inventor, who gets the exclusive rights.


Under the Venice patent law of 1474, an

invention had to be new to a certain region.

The resulting patent was valid for up to

10 years. The details of the invention were

not published.

Galileo Galilei obtained a patent on a water

pump in 1594.

Today, patents must, according to European

patent law, be new to the world. They last for

up to 20 years. The details of the invention are

published.

The main goals of today's patent system are to

provide an incentive to innovate – protecting

the results of innovation means that the

inventor can reap the benefits, which in turn

makes it easier to attract investment – and to

provide an incentive to share knowledge. To get

protection the inventor must publish the details

of his invention.

This dual nature of the patent system is

sometimes referred to as a contract between

society, which gets the knowledge, and the

patent applicant, who gets the exclusive rights.


Slide 5 The role of the patent system

The role of the patent system is to encourage technological innovation by rewarding intellectual creativity. In providing protection for their inventions, patents provide incentives to patent owners by offering them recognition for their creativity and the possibility of obtaining financial rewards if they commercialise or exploit their inventions. (The different ways that a patent owner might benefit financially from a patent are discussed later.)

The patent system also promotes dynamic competition by encouraging investment in the development of new or improved products or processes, and by encouraging research and development. Investors are more likely to provide financial backing if there is the potential for a return on their investment from inventions that can be patented, then commercialised and exploited.

The patent system can also encourage the dissemination of information about new inventions that may be of benefit to society, because the information disclosed in patents is published. The invention described in a patent document will ultimately be available for anyone to use once the patent has expired.

Patents are a good source of information about new technologies. There are free online databases available which can help you find out what inventions have already been patented. These databases also promote technology transfer, because anyone can use them to find patented technologies that they may want to access and use themselves, for example by negotiating a licensing agreement with the patent owner.


This slide summarises the role of the patent

system.

The patent system encourages technological

innovation by rewarding intellectual creativity.

In providing patent owners with protection for

their inventions, patents offer them recognition

for their creativity and the possibility of

obtaining financial reward if they commercialise

or exploit their inventions.

The patent system can also promote

competition and investment in developing

new or improved products or processes by

encouraging research and development.

Investors are more likely to provide financial

backing if there is the potential for a return on

their investment from inventions that can be

patented.

Because the information disclosed in patents is

published, the patent system encourages the

dissemination of information that may be of

benefit to society.

It can promote technology transfer by way of

the publicly available information in patent

databases. Thanks to these databases, anyone

can find patented technologies that they may

want to access and use themselves.


Slide 6 Patents as a social contract

As we have seen, patents are sometimes considered as a kind of contract between the applicant and society. The applicant is interested in benefiting (personally) from the invention.

Society is interested in

– encouraging innovation so that better products can be made and better production methods can be used for the benefit of all;

– protecting new innovative companies so that they can compete with large established companies, in order to maintain a competitive economy;

– finding out about the details of new inventions so that others can further improve them; and

– promoting technology transfer (i.e. from universities to industry).

So both parties are interested in a contract that grants protection to innovators (thereby also increasing the motivation to innovate) in exchange for disclosure of the invention. This social contract is institutionalised in the form of patent law.

Two requirements for patent protection emerge almost naturally. Firstly, if the invention is not new to the world, then the applicant does not have anything to disclose, and society has no reason to conclude such a contract with him. Secondly, if the invention is new but obvious to a person skilled in the art, then the applicant does not possess anything the public is eager to learn, and there is no reason to exchange exclusivity for the publication of the invention.

Applicants benefit from the patent system because they are granted the exclusive right to exclude others from commercially exploiting the invention. These rights are transferable. Owners can license their patents to third parties for use subject to certain conditions.


As we have already seen, patents are

sometimes considered as a kind of contract

between the applicant and society.

Applicants and patent owners are interested in

benefiting from their inventions.

Owning a patent gives them the right to

prevent others from making, using, offering

for sale, selling or importing a product that

infringes the patent, for a limited amount of

time and the country for which the patent has

been granted.

The exceptions to this are use of the patent

for non-commercial purposes, including private

use and academic research.

Society is interested in:

– Encouraging innovation so that better

products can be made and better production

methods can be used for the benefit of all;

– Protecting new and innovative companies so

that they can compete with larger established

companies, in order to maintain a competitive

economy;

– Finding out the details of new inventions

so that other engineers and scientists can

further improve them; and

– Promoting technology transfer, that is from

universities to industry.

In return for this protection, applicants must

reveal their inventions to the public, so others

can build on them. This takes the form of

publication of the application by the relevant

patent office.

This social contract is institutionalised in the

form of patent law.


Slide 7 Rights conferred by patents

Patent owners have the right to prevent others from making, using, offering for sale, selling or importing products that infringe their patents, for a limited amount of time in the country in which the patent was granted. If you own a patent, you can exclude everybody from commercially using the invention, even inventors who subsequently independently make the same invention.

However, some exceptions exist. For example, if another company independently makes the same invention and starts using it before you apply for a patent, in many jurisdictions the first company will be allowed to continue using the invention. The legal rights conferred by patents also do NOT extend to acts done privately and for non-commercial purposes or acts done for experimental purposes relating to the subject-matter of the patented invention.

Patent rights can be transferred, for example by selling, licensing or donating the patent.

If using your invention means using other people's intellectual property, then you need to have their permission! For example, if your biotech invention involves copying DNA, then you need to have the permission of the company that owns the intellectual property.


Patent owners have the right to prevent others

from making, using, offering for sale, selling or

importing a product that infringes their patent,

for a limited amount of time.

Exceptions include use for non-commercial

purposes, such as private use or academic

research.

Further options include licensing inventions

to others, or allowing everybody to use the

invention for free.

Many important technologies such as CDs,

DVDs, mobile phone technology and digital TV

are covered by numerous individual patents

that companies license to each other in a

process known as cross-licensing.

If commercialising your invention means using

the intellectual property of others, then you

need to have their permission!


Slide 8 What is a patent? (animated slide)

This slide is animated. The first click displays the bullet points, the second the kettles. These examples are designed to demonstrate how inventions can "nest" within one another.

According to some dictionary definitions, patents give their owners "the right to exploit the invention". These dictionaries are wrong!

Patents do not grant the right to use the invention. For example, before a new drug can be sold on the market, it needs the formal approval of government agencies. Rather, a patent is a negative right. It is the right to exclude others from doing certain things with your invention, whilst not conferring any positive or enabling right on the owner. Patentees can exclude others from making, using, selling or importing their invention.

Patents are strictly territorial. You cannot take action against infringing products or processes in countries where you do not have patent rights. You must wait for such infringing articles to cross the border into a country where you have rights before you can take action. (You might not be planning to sell any products in, for example, East Asia, but if you think it will be a source of infringing copies which would flood your European market, then you would be wise to consider patent protection in East Asian countries, so that you can stop the problem at the source.)

At this point you could ask students to suggest reasons why a patent holder might not be allowed to work their invention.

It may be that your invention falls within the scope of an earlier patent. You might have invented the first-ever electric kettle which uses a ceramic heating element as its base-plate. This has advantages over kettles which have a metal heating element upon which limescale (calcium deposits) forms. Such a kettle might be novel and inventive, and get you a patent (patent B). But it still falls within the scope of an earlier patent for all electric kettles (patent A). In order for you to make, use and sell your invention you need a licence from the patent owner of the earlier, broader patent, but they in turn would need a licence from you to make kettles with ceramic heating elements. This is where you could enter into a cross-licence agreement. Indeed, this is where the vast majority of industrial collaborations start.

Note: Patents owned by others may overlap or encompass your own patent. If this happens, you need to obtain the right to use other people’s inventions – for example by obtaining a licence – before you can start commercialising your own patented invention, and vice versa.

To establish whether or not you are free to use your invention, you have to perform a patent search. It is best to do this before starting development, so as not to waste time and effort by duplicating what others have already done. If in doubt, ask a patent attorney or other patent professional.

Given the enormous number of patents that exist today, it is quite difficult for many companies to ensure that their products do not unknowingly infringe a patent. But despite the difficulties, companies have no option but to carefully search and analyse existing patents first.


The key concept of this slide is to show that a

patent is a negative right, not a positive one.

For example, let us imagine that you have

invented the first-ever electric kettle to have a

ceramic heating element as its base-plate. This

kettle has advantages over kettles which have

a metal heating element upon which limescale

forms. Such a kettle might be novel and

inventive, and could get you a patent, which we

will call patent B.

However, your patent does not grant you the

right to use your invention, because it falls

within the scope of an earlier patent for all

electric kettles, which we will call patent A.

For you to make, use and sell your invention you

need a licence from the owner of the earlier,

broader patent, patent A.

But they in turn would need a licence from you

to make kettles with ceramic heating elements.

This is where you could enter into a cross-

licence agreement. Indeed, this is where the

vast majority of industrial collaborations start.

Patents owned by others may overlap or

encompass your own patent. In this case, you

need to obtain the right to use other people’s

inventions – for example by way of a licence –

before you can start commercialising your own

patented invention, and vice versa.


Slide 9 What do patent documents look like?

Bibliographic information A patent application must name the inventors and the person or entity that applied for the patent. If a transfer of rights occurs during the examination proceedings, the patent will show the proprietor of the patent at the point in time when it was granted.

If a patent is granted, the bibliographic data in the patent specification will also include the date of filing, the date the patent was granted, the patent number and the technology class. The date of filing is very important because this determines the date the patent will lapse (20 years after the date of filing; some exceptions exist) and it is also important for determining the prior art (= everything communicated to the public before the date of filing).

The technology class is important because it allows you to search easily for all patents that pertain to a specific technology domain. The rest of the bibliographic information is also useful for finding relevant patents. For example, to find the patents applied for by certain companies or inventors in a field, you can perform a search for their names. However, it is important to be aware that the applicant named on the application may no longer be the owner of the patent. When a patent is sold or transferred, for example when a company is bought, the new owner is not obliged to inform the patent office and the patent office will not issue a new patent publication, even if it learns about the transfer of ownership (patent reassignments known to patent offices are available in special databases only).

Claims From a legal perspective, the most important part of a patent document is the claims, as they define the extent of the patented technology. If a company's product or process falls within the scope of the claims then there may be an infringement and the patent owner can stop the company's activity through an action brought in the courts. Damages and other remedies may be awarded if an infringement is found to have occurred.

The claims will often change during the application process. Frequently they will be narrowed down because part of the invention claimed in the application is found not to be new (i.e. prior art exists) or because the patent office considers that what is being claimed by the applicant is much broader than he has disclosed in his explanation of how to repeat the inventive process. This second issue is called insufficiency of disclosure.

Patent claims are often difficult to read. Legal interpretation of the claims of a patent is a task best performed by patent attorneys or other patent professionals.


Patent applications can be filed by the inventor

or the inventor's employer.

Inventions are usually the property of the

company that employs the inventor. This is

also the case for university researchers in

many countries.

A European patent application contains a full

and detailed description of the invention so

that others can understand and replicate it,

one or more claims which define the technical

features of the invention for which protection is

sought - this is called the "scope of protection"

- and optional drawings which help with

understanding and interpreting the claims and

description.

The cover sheet contains bibliographic

information about the applicant and the

inventor.

It also contains an abstract, one of the

drawings, and details of the technical class.

The abstract and the technical class are useful

when it comes to searching for patents.


The items shown on the slide will be found in most patent documents as part of the description.

Rule 42 EPC, which lays down the legal requirements for descriptions of European patents, reads as follows:

"1. The description shall: (a) specify the technical field to which the invention

relates; (b) indicate the background art which, as far as is

known to the applicant, can be regarded as useful to understand the invention, draw up the European search report and examine the European patent application, and, preferably, cite the documents reflecting such art;

(c) disclose the invention, as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood, and state any advantageous effects of the invention with reference to the background art;

(d) briefly describe the figures in the drawings, if any; (e) describe in detail at least one way of carrying out

the invention claimed, using examples where appropriate and referring to the drawings, if any;

(f) indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the invention is industrially applicable.

2. The description shall be presented in the manner and order specified in paragraph 1, unless, owing to the nature of the invention, a different presentation would afford a better understanding or be more concise."

Slide 10What does the description contain? (optional)


This slide shows the what a typical description

contains. The description also refers to the

drawings.


Patentability requirements vary from country to country. In most countries, patents cannot be granted in respect of ideas, concepts, discoveries, computer programs as such, business methods, teaching methods, diagnostic methods, medical therapies, and so on.

However, if a computer algorithm is used to achieve a technical result, e.g. in an electronic control device, it can be patented. The technical effect of the computer algorithm must go beyond the normal physical effects involved in the execution of the program (e.g. of electric currents flowing in computers when calculating). For more information on this topic see the EPO brochure "Patents for software?" at www.epo.org/service-support/publications/issues/patents-for-software.html

Each jurisdiction has its own exclusions from patentability. For example, in the USA patents on software as such and on business methods were regarded as patentable for some time. However, in recent court decisions this practice has been limited.

Other conditions are that the invention must have an industrial application and does not interfere with morality or ordre public. For example, the requirement of industrial applicability may be a hurdle in biotechnology.

The European Patent Convention (EPC) provides a comprehensive list of matter excluded from patentability in Europe. Article 52 covers what is considered not to be an invention and Article 53 covers what is excluded from patentability even if it is an invention.

In addition to the list of subject-matter or activities "as such" that are not considered to be inventions for the purposes of granting European patents (under Article 52 EPC), inventions falling into any of the following categories are excluded from patentability (see Article 53, Rule 28 EPC):

– inventions whose commercial exploitation would be contrary to ordre public or morality (including, for example, processes for cloning human beings or the use of human embryos for commercial or industrial purposes).

– plant or animal varieties or essentially biological processes for producing plants or animals (although "microbiological processes and products thereof" are patentable).

– methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body (although products, in particular substances or compositions for use in such methods, e.g. medicaments or surgical instruments, are not excluded).

For more information see the EPO's "Patents for life?" brochure at www.epo.org/service-support/publications/issues/biotechnology.html.

The text of the European Patent Convention is available at www.epo.org/epc.

Slide 11What can and can't be patented (animated slide)


Under the European Patent Convention or EPC,

"European patents shall be granted for any

inventions, in all fields of technology, provided

that they are new, involve an inventive step and

are susceptible of industrial application."

"New" means that there should have been

no previous public disclosure of the invention

before the date of filing. If an invention has

already been revealed to the public there is

nothing to "trade" for exclusivity, and therefore

no social contract.

The concept of inventive step is quite difficult

to assess. The EPO must compare the invention

with what would have been obvious to an

imaginary skilled person at the time of filing.

The EPC does not provide a definition of what

is meant by the term "invention".

It does, however, provide a non-exhaustive

list of subject-matter that are not considered

inventions. The items listed at the bottom

of this slide are expressly excluded from

patentability.


Slide 12 When is an invention "new"?

An invention can only be patented if it is new. An invention is considered to be new if it does not form part of the state of the art. The purpose of this requirement is to prevent the state of the art being patented again. By "state of the art" we mean everything that was available to the public before the date of filing of the application. This means that at least one member of the public had access to the information and that this person was not bound to secrecy or confidentiality. This includes internet citations, as long as it can be proven that the information was on the web at a certain date.

There are a few exceptions to the requirement that an invention cannot have been disclosed prior to the date the patent is filed. One is if the publication was due to an evident abuse in relation to the applicant, or the applicant had displayed the invention at an officially recognised international exhibition. See Article 55 EPC for details: www.epo.org/law-practice/legal-texts/epc.html


For a European patent to be granted by the EPO,

the invention must be new at the date of filing

of the patent application.

"New" means that the invention does not form

part of the state of the art.

The state of the art comprises everything made

available to the public by means of a written

or oral description, by use, or in any other way,

before the date of filing of the European patent

application.

It is vital that you keep your invention

confidential until you have filed your

application.


For an invention to be new or novel, it must not be publicly disclosed prior to the filing of the patent application. Only the aspects of the invention that are new can be protected by a patent.

Any public disclosure prior to filing the application will destroy the novelty of your invention. Public disclosure can include talking about the invention in a lecture, a seminar or an exhibition, publishing an article, or mentioning it in a blog entry. Selling a product that incorporates the invention may also be considered a public disclosure.

You must therefore not tell anyone about your invention before you apply for a patent. However, you can tell qualified (registered) lawyers, solicitors and patent attorneys, because anything you say to or show them is legally privileged. This means it is in confidence and they will not tell anyone else.

If you need to discuss your invention with someone other than a lawyer or patent attorney before you apply for a patent, a non-disclosure agreement (NDA) can help. If you are thinking about disclosing your invention to someone else, you should consult a patent attorney or lawyer first.

If there are any students in the audience who have already published or disclosed an invention, point out that in some countries it is still possible to apply for a national patent after first publication, provided you do so within a certain time limit ("grace period"). Under the EPC, no such grace period exists and any publication or disclosure prior to filing the first application will destroy novelty.

See the EPO website for the "How to apply for a European patent" guide: www.epo.org/applying/basics.html.

Slide 13Do's and don'ts for safeguarding novelty


If you disclose your invention before the

filing date you risk invalidating your patent

application.

Remember the social contract? If you have

already revealed your invention to the public,

you will have nothing to "trade", so you won't

get a patent, even if it was you who made the

invention public!

Under the EPC, the first to file the patent

application will be entitled to the grant of a

patent on a particular invention.

If you disclose your invention before filing, it

will no longer be considered "new", regardless

of the form the disclosure took, including

written form (even in a publication that no-one

might have read), oral disclosure (such as in

a presentation or lecture), actual use or sale,

and regardless of the place. In other words, all

material made available to the public anywhere

in the world forms part of the state of the art.

So the key message is keep it confidential!

Do not disclose your invention to anyone, not

even orally, until you have filed your patent

application.

If you need to talk to potential customers or

investors before you file, make sure you sign a

non-disclosure agreement with them first.

Once you have filed your application, you are

free to present, publish or sell your invention as

you wish.


An invention is held to involve an inventive step - i.e. to be inventive - if it is not obvious to the skilled person in the light of the state of the art. The inventive step requirement is intended to prevent exclusive rights forming barriers to normal and routine development.

Inventive step is usually evaluated on the basis of the problem-solution approach. This approach assesses whether the solution presented to the problem in the patent application is obvious or not to the person skilled in the art.

The skilled person is a legal fiction. The concept of the skilled person means a practitioner with general technical knowledge in the in the relevant technical field. He or she is assumed to have access to the entire state of the art and to be capable of performing routine work and experimentation, but to be devoid of inventive skills.

When is an invention "inventive"? This always depends on the specific circumstances of the case. Various factors may be taken into account, such as the unexpected technical effect of a new combination of known elements, the choice of specific process parameters within a known range, the difficulty the skilled person has in combining known documents, secondary indicators such as the fact that the invention solves a long-standing technical problem which there have been many attempts to solve, or the overcoming of a technical prejudice.

Slide 14When is an invention "inventive"?


At the EPO, inventive step is assessed using the

problem-solution approach.

This approach assesses in an objective manner

whether the solution proposed to the problem

presented in the patent application is obvious

or not to the person skilled in the art.

The person skilled in the art is a legal fiction.

He or she is considered to be a practitioner with

a general technical knowledge in the relevant

field, with access to the entire state of the art

and capable of performing routine work and

experimentation.

He does not, however, have any inventive skills.


This slide is animated. The first click goes to the prior art search stage. Each subsequent click reveals a prior art document.

The claim describes the technical features of the invention.

The first step in deciding whether an invention is new is to define the prior art, the relevant part of that art, and the content of that relevant art. For this, a search into the prior art is done. The patent examiner concerned usually consults a number of databases containing patent documents as well as scientific journals. He may also search on the internet or in other media.

In our example, the search revealed four documents. The patent examiner now has to compare the claim with each document in turn and see whether the invention differs from it. Here none of the documents discloses all the features of the claim. Hence, the invention (as expressed in the claim) is new.

Slide 15Assessing novelty (animated slide)


The claim describes the technical features of

the invention.

In order to be able to decide whether an

invention is new, the patent examiner

responsible for examining the application first

has to define the prior art. To do this, he has to

perform a search into the prior art, which will

usually involve consulting databases containing

patent documents and scientific journals, as

well as searching the internet and other media.

In the example shown here, the search revealed

four documents. The patent examiner compared

the claim with each document in turn and

checked whether the invention differs from it.

None of the documents discloses all the features

of the claim, so the invention as expressed in the

claim is new.


This slide is animated. Each click reveals a stage in the assessment of inventive step.

It is important to remember that an invention which at first sight appears obvious might in fact involve an inventive step. Once a new idea has been formulated, it can often be shown theoretically how it might be arrived at, starting from something known, by a series of apparently easy steps.

Patent examiners are expected to be wary of ex post facto analyses of this kind and to bear in mind that the documents produced in a search have, of necessity, been obtained with foreknowledge of the subject-matter that constitutes the alleged invention.

The EPO has developed an approach which avoids such errors and allows examiners to objectively judge the presence of inventive activity at the time the claimed invention was made. Known as the problem-solution approach, it allows for a more objective assessment of inventive step and lessens the risk of hindsight.

The various questions that must be asked during this analysis can be grouped into three stages.

Slide 16Assessing inventive step (I) (animated slide)

Stage 1In view of the documents produced in the search the examiner considers the differences between the claim and each document. Next, he selects the document which comes closest to the invention. Normally, this is the document which has the most features in common with the invention. In this example, document D1 has been taken as the starting point, and the features that the claim has in common with this document have been determined.

Stage 2The examiner notes the differences between the claim and this document. He thinks of the advantages these differences may have over the claimed invention. Clearly, the time taken to fill several cups is reduced by having a second spout.

The next question to ask is whether the skilled person would have overcome the drawback of document D1 in the same manner as the inventor did. In order to answer this question, the examiner formulates a so-called objective problem. The problem usually is to achieve the same effect as the invention. In this case the question would be "How can we modify the teapot of D1 in order to reduce the time needed to fill multiple cups?"

This question is answered on the next slide.


To ensure an objective assessment of inventive

step, the EPO, for example, uses a structured

problem-solution approach which lessens the

risk of hindsight.

The questions asked during this analysis can be

grouped into three stages.

In stage 1, the examiner considers the

differences between the claim and each

document. He then chooses the document

which comes closest to the invention. This is

normally the document which has the most

features in common with the invention. In our

example, this is document D1 and we have

identified the features that the claim has in

common with it.

In stage 2, the examiner notes down differences

between the claim and this document. He thinks

of advantages based these differences. In this

case it is the reduction in the time needed to fill

several cups thanks to the second spout.

The next question is whether the skilled

person would have overcome the drawback

of document D1 in the same manner as the

inventor did. To answer this question, the

examiner formulates a so-called objective

problem, which is usually how to achieve the

same effect as the invention. In this case the

question would be "How can we modify the

teapot of D1 in order to reduce the time needed

to fill multiple cups?" We will look at the answer

to this question on the next slide.


This slide is animated. The first click shows the problem facing the skilled person. The second click shows the other prior art documents the skilled person would consider in order to find a solution. The third click asks the question whether the combination of the teachings of D1 with the teachings of one of the other documents results in the invention.

Stage 3We have to bear in mind that, realistically, the skilled person only has access to the prior art in his technical field, which is the technical field of the invention, in this case the field of kitchen utensils for food processing, in particular beverages. In order to come to a fair judgement in the above question, the skilled person is meant to look only at documents from this technical field. Clearly, document D2, the fertiliser distributor, does not belong to this field and is therefore not considered any further.

Next, the examiner checks whether the other documents (D3 and D4) relate to filling several cups simultaneously and whether they offer the advantage of the invention.

– D4 does not disclose the same effect, since the fundamental principle of the bottle in D4 is different. D4 uses one spout at a time, but never the two spouts together, to pour liquid. D4 therefore teaches away from the invention and is discarded in the further assessment.

– D3 discloses an espresso maker with a filter handle that allows two cups to be filled concurrently. This document looks promising as it addresses the problem of filling several cups at the same time.

The final step in this assessment is to make a careful judgement as to whether the invention is obvious when looking at these two documents.

In order to do so, the examiner must ask the following hypothetical questions:

Slide 17Assessing inventive step (II) (animated slide)

If the skilled person were to look at D1 in combination with D3, would he find a solution for the problem of reducing the filling time?

Would he grasp the technical teaching from D3 that he had to add a further spout to the teapot of D1?

And what technical teaching would he take from D3?

Bear in mind that this is only a very simple example for the purpose of demonstrating the considerations which have to be made when assessing inventive step. For the sake of this example, the examiner may make the following considerations with regard to D3.

Firstly, the outlet in D3 does not reduce the time for filling two cups since the flow rate of the espresso maker remains the same. In fact, the opposite is true: it takes twice the time to fill two cups, or, looking at it another way, in the same amount of time, the two cups would only get half full.

Secondly, even if the skilled person applied the principle of the outlet with the two pipes (D3) to the known teapot (D1), he would not arrive at the claimed invention. In D3, the outlet is Y-shaped and consists of one pipe extending into two pipes, whereas the invention makes of use of two separate spouts.

Therefore, the examiner may finally arrive at the conclusion that the claim is inventive, since the two documents in combination would not arrive at the claimed invention. A patent could thus be granted on the basis of this claim.


In stage 3, the examiner is looking for an answer to the question: How would the skilled person modify the teapot of D1 in order to reduce the filling time for multiple cups?

[Click 1]

The skilled person realistically only has access to the prior art in the technical field of the invention, which in this case is the field of kitchen utensils for food processing, in particular beverages. To come to a fair judgement, the skilled person should look at documents from this field only. The fertiliser distributor in D2 does not belong to this field, so should not be considered any further

Next, the examiner checks if the other documents - D3 and D4 - are concerned with filling several cups simultaneously and whether they offer the same advantage as the invention. D4 does not disclose the same effect, as it only uses one spout at a time, and not two together. Thus, D4 teaches away from the invention and must be discarded.

D3 discloses an espresso maker with a filter handle that allows two cups to be filled concurrently. This looks promising.

[Click 2]

The examiner then comes to the final step in his assessment, which is to make a careful judgement as to whether the invention is obvious when looking at the two documents.

[Click 3]

To do this he must ask the following hypothetical questions:

– If the skilled person looked at D1 in combination with D3, would he find a solution for the problem of reducing the filling time?

– What teaching would he take from D3?

For the sake of this example, the examiner may make the following considerations with regard to D3.

Firstly, the outlet in D3 does not reduce the time needed to fill two cups since the flow rate of the espresso maker remains the same. In fact, the opposite is true: it takes twice as long to fill two cups. Looked at another way, in the same amount of time, the two cups would only get half full.

Secondly, even if the skilled person applied the principle of the outlet with the two pipes in D3 to the known teapot in D1, he would not arrive at the claimed invention. In D3, the outlet is Y-shaped and consists of one pipe extending into two pipes, whereas the invention makes use of two separate spouts.

The examiner may therefore arrive at the conclusion that the claim is inventive, since the two documents in combination would not arrive at the claimed invention. A patent could thus be granted on the basis of this claim.


There are currently three different ways of obtaining patent protection in Europe. The first is to file a national patent application in the country concerned, the second to file a patent application with the European Patent Office (EPO), and the third to file an international patent application via the Patent Cooperation Treaty (PCT). All of these options have their advantages, drawbacks and implications with regard to time frame and costs. Filing individual national patent applications in multiple European countries means complying with the national requirements in each country. These can differ in terms of language, time limits and fees, and whether or not the applicant has to be represented by a patent attorney.

This administrative burden has been greatly reduced by the European patent system, which harmonises the patent granting procedure for the member states of the European Patent Organisation. European patents are granted by the EPO. They are mostly equivalent to national patents in those countries for which they are granted. They have a legal effect similar to a bundle of national patents in all the countries that the applicant has chosen from the Organisation's member states. There are cost implications in particular with regard to translations, renewal fees and attorney fees after the grant of the patent.

The EPO is located in Munich (headquarters), The Hague, Berlin, Vienna and Brussels, and currently has 38 member states (European Union: 28). The latest countries to join the Organisation were Albania and Serbia in 2010. Two further countries recognise European patents upon request: Montenegro and Bosnia and Herzegovina.

For a guide to applying for a European patent go to www.epo.org/applying/basics.html.

For frequently asked questions on applying for a patent go to www.epo.org/service-support/faq/own-file.html.

Obtaining a European patent can cost around EUR 5 300 in EPO fees alone.

For the latest figures, go towww.epo.org/law-practice/legal-texts/html/epc/2013/e/ma6.html.

The forthcoming European patent with unitary effect ("unitary patent") will provide a further option for

Slide 18How to obtain patent protection in Europe (options 1 and 2) (animated slide)

applicants. It will be a European patent granted by the EPO under the provisions of the European Patent Convention (EPC) to which unitary effect for the territory of the 25 participating EU member states can be attributed after grant, at the patentee's request.

Once a European patent has been granted, any legal proceedings that arise, such as infringement or revocation actions, are currently dealt with not by the EPO but by the national courts of the country or countries where the actions arise. From the date of entry into force of the Agreement on a Unified Patent Court, the Unified Patent Court will have the exclusive competence for infringement and revocation actions relating to European and unitary patents as far as the territories of the contracting states to the UPC are concerned.

Additional informationThe concept of priorityIf the applicant for a patent in a given country has already filed an earlier patent application for the same invention in any other country, he can, within 12 months of the date of filing of the earlier application, claim this earlier filing date as the "priority date" for his subsequent application.

This priority date counts as the date of filing of the subsequent application for the purposes of assessing the state of the art and the right to the patent.

This can be advantageous for the applicant for two reasons. First, if someone else publishes the same invention in the period between the priority date and the actual date of filing of the subsequent application, this publication will not count as part of the state of the art when the novelty and inventive step of the subsequent application are assessed.

Second, most patent law systems, including that established by the EPC, apply the "first-to-file" principle. If two applicants file an application for the same patent, the one who files first will get the right to the patent.

So if applicant A can validly claim a priority date for his subsequent application in a given country, he will be granted the patent for this country even if applicant B has applied for the same patent in this country in the period between applicant A's priority date and the date on which applicant A actually files his later application.


There are three main ways of obtaining patent

protection in Europe.

The first is by filing with a national patent office.

A national patent is valid only in the country for

which it has been granted. You do not have to

be a resident of a particular country in order to

apply for a patent there. To obtain patents in

several countries, applicants must file a separate

patent application for each country. Each

application has to fulfil the relevant national

requirements.

The second route is via the European Patent

Office. The European patent system was set up

harmonise and streamline the patent granting

process in Europe. With the grant of a European

patent the applicant can obtain national

patents in the European countries he chooses

to designate. For this, he has to perform certain

acts such as paying fees or translating the

patent document.

Currently, patent protection can be gained

in up to 40 countries by filing a single patent

application with the EPO. The EPO has 38

member states. The latest countries to join were

Albania and Serbia in 2010. A further two states

- Montenegro and Bosnia and Herzegovina -

recognise European patents upon request.

A further alternative, a European patent with

unitary effect – or unitary patent – will be

available from the date of entry into force of the

Agreement on a Unified Patent Court.

The third option – applications under the Patent

Cooperation Treaty – offers patent protection in

countries worldwide. We will look at this option

in a moment.


The EU's so-called "patent package" implements enhanced co-operation between 25 of the EU's 28 member states (all EU member states except Italy, Spain and Croatia). It consists of Regulation (EU) No. 1257/2012 of the European Parliament and of the Council of 17 December 2012 creating unitary patent protection (OJ EPO 2013, 111), Council Regulation (EU) No. 1260/2012 of 17 December 2012, which sets out the translation arrangements (see OJ EPO 2013, 132), and the Agreement on a Unified Patent Court (UPC Agreement, OJ EPO 2013, 287).

The two regulations entered into force on 20 January 2013. They will, however, only apply from the date of entry into force of the UPC Agreement.

The UPC Agreement, which constitutes the third component of the patent package, will enter into force after the deposit of the 13th instrument of ratification or accession (provided they include those of the three states with the highest numbers of European patents in force - i.e. France, Germany and the United Kingdom). The Agreement was signed in February 2013 by all the EU member states except Poland and Spain. However, these two states, as well as Croatia, which joined the EU on 1 July 2013, could still accede to the Agreement.

The unitary patent represents a further option for users in addition to existing national patents and European patents. It will be a European patent granted by the EPO under the provisions of the European Patent Convention to which unitary effect for the territory of the 25 participating EU member states is attributed after grant, at the patentee's request. According to Regulation No. 1257/2012, unitary effect may be requested for any European patent granted on or after the date of application of the Regulation, on condition that the European patent was granted with the same set of claims in all 25 participating member states.

The EPO will be responsible for administering requests for unitary effect. It will also be responsible for collecting and administering the renewal fees for unitary patents and for keeping a register for unitary patent protection which will include legal status information such as licences, transfers, limitations, revocations and lapses.

The unitary patent will cover the territories of the 25 participating EU member states and may only be

Slide 19Key facts about the unitary patent

limited, transferred, revoked, or lapse in respect of all these territories. It may, however, be licensed in respect of the whole or part of these territories.

With regard to the translation arrangements, it was decided to use the EPO's tried and tested language regime based on three official languages, namely English, French and German. After grant of the European patent, if the patent holder opts for a unitary patent, no further translations will be required (except in cases of dispute). Machine translation will be available for the purpose of getting information about the content of patents. However, during a transitional period – before a sufficiently high quality of machine translation into all official EU languages is available – where the language of the proceedings before the EPO is French or German, a full translation of the European patent specification into English must be provided or, if the language of the proceedings is English, into any other official language of the EU. This translation must be filed by the patentee together with the request for unitary effect. It has no legal effect and is for information purposes only.

In addition, for certain applicants (such as SMEs and non-profit organisations) who have their residence or principal place of business in an EU member state, a compensation scheme for the reimbursement of all translation costs up to a ceiling will be introduced for unitary patents which were in an EU language other than English, French or German. This compensation scheme will also be administrated by the EPO.


First, though, let us have a look at some key

facts about the unitary patent, which is a

European patent with unitary effect.

The unitary patent is a European patent granted

by the EPO. After grant and at the patentee's

request, unitary effect is attributed for all EU

member states except Italy, Spain and Croatia.

The unitary patent could be in force as early as

1 January 2015.

Unitary effect means that the patent may only

be limited, transferred or revoked, or lapse in

respect of all these 25 states. It may however

be licensed in respect of the whole or part of

these territories. There will be a single renewal

fee which will be collected by the EPO. The EPO

will also be responsible for keeping a register

with legal status information such as licences,

transfers, limitations, revocations and lapses.

As far as languages and translation

requirements are concerned, no further

human translations will be required after

grant. Machine translation will be available

for the purpose of getting information about

the content of a patent. For a transitional

period – before a sufficiently high quality of

machine translation into all official EU languages

is available – applicants must provide a full

translation into English. If English was the

language of the application, then a translation

into any other official language of the EU must

be provided.


Currently, the national courts and authorities of the contracting states to the European Patent Convention are competent to decide on the infringement and validity of European patents. In practice, this gives rise to a number of difficulties when a patent proprietor wishes to enforce a European patent – or when a third party seeks the revocation of a European patent – in a number of countries. These include high costs, the risk of diverging decisions and a lack of legal certainty.

The Agreement on the Unified Patent Court addresses these problems by creating a specialised patent court (Unified Patent Court, or UPC) common to the contracting member states with exclusive jurisdiction for litigation relating to both European patents and European patents with unitary effect (unitary patents). This includes infringement actions, revocation actions and counterclaims for revocation, actions for damages, actions for provisional and protective measures and injunctions, and actions concerning decisions of the EPO in carrying out the new tasks entrusted to it in relation to unitary patents.

The UPC will consist of a Court of First Instance, a Court of Appeal and a Registry. The Court of First Instance will comprise local and regional divisions as well as a central division. The Court of Appeal will be located in Luxembourg, while the seat of the central division of the Court of First Instance will be in Paris. Specialised sections of the central division dealing with disputes relating to patents in particular classifications will be set up in London and Munich. All panels of the new jurisdiction will be multinational and can be composed of legally and technically qualified judges depending on the division and on the action to be heard. All judges will have proven experience in the field of patent litigation.

Furthermore, the UPC Agreement establishes a patent mediation and arbitration centre, as well as a training centre for judges.

The Unified Patent Court is a court common to the contracting member states and will thus have to ensure the correct application and uniform interpretation of EU law, as any national court, in particular in accordance with Article 267 TFEU (Treaty on the Functioning of the European Union).

Slide 20Key facts about the Unified Patent Court

This means that the UPC will, where necessary, be required to refer questions to the CJEU on the interpretation of, for example, the two Regulations creating unitary patent protection and the Directive on the legal protection of biotechnological inventions.

During a transitional period of seven years, actions for infringement or for revocation concerning "classic" European patents can still be brought before the national courts. A proprietor of or an applicant for a European patent granted or applied for prior to the end of the transitional period will also have the possibility to opt out from the scope of the UPC Agreement (unless an action has already been brought before the UPC). They will have to notify their opt-out to the Registry by the latest one month before expiry of the transitional period. This opt-out can be withdrawn at any moment via notification to the Registry, unless an action concerning the relevant patent has already been brought before a national court. The transitional period may be extended by a further seven years by the Administrative Committee (decision-making body within the court system composed of one representative per contracting member state).


In the current situation, the national courts

and authorities of the contracting states of the

European Patent Convention are competent

to decide on the infringement and validity of

European patents in their respective countries.

This can give rise to difficulties, including high

costs, the risk of diverging decisions and a lack

of legal certainty.

The creation of the Unified Patent Court or UPC

will provide a specialised patent court common

to the contracting member states which will

have exclusive jurisdiction for infringement and

revocation actions for both European patents

and unitary patents.

The UPC will consist of a Court of First Instance,

a Court of Appeal and a Registry. The Court of

First Instance will comprise local and regional

divisions as well as a central division. The seat

will be in Paris, and there will be specialised

sections in Munich and London. The Court of

Appeal will be located in Luxembourg. All panels

will be multinational and can be composed

of legally and technically qualified judges

depending on the division and on the action to

be heard.


The Patent Cooperation Treaty (PCT) allows applicants to apply for patents in multiple member states by means of a single patent application. PCT applications do not lead to "international" patents. Instead they branch into individual national patent applications at a later stage.

Thus, after the initial PCT phase, the cost of a PCT patent corresponds to the sum of the cost of all the individual patent applications in all the countries for which the application has been filed. The total cost for worldwide protection can amount to as much as EUR 100 000.

The PCT also issues a search report, offers an examination and allows for amending the application, which can also be a huge cost saving. The search report is usually communicated to the applicant around four to five months after the filing of the international application.

The major advantage of a PCT application is that the actual filing of the application in each of the countries in which protection is sought can be delayed until the PCT process is completed. PCT applications give the applicant up to 30 months to decide, firstly, if the invention is worth the effort of international patenting, and, secondly, in which countries he wants to seek protection (for PCT applications entering the regional phase before the EPO (Euro-PCT applications), the time limit is 31 months).

Given the high cost of applying for patents in many countries, this gain of 18 months (or 19 months for Euro-PCT applications) can be very important, as at the same time the payment of national patent office fees is delayed (as compared to first filing a national patent application and further national patent applications within 12 months claiming priority from the earlier application).

In particular for SMEs, start-up companies or spin-outs, a PCT application with the prospect of IP protection may be a decisive factor when it comes to obtaining external funding. Moreover, after 30 months the applicant is usually in a better position to evaluate whether it is worth pursuing national applications on the basis of the PCT application (cost implication).

Slide 21How to obtain patent protection in Europe (option 3)

The cost of filing an international PCT application with the EPO as receiving office amounts to around EUR 3 100 (plus attorney fees where applicable). However, the cost varies a lot depending on, for example, the number of pages or the designated countries in which protection is being sought.

Details of the current fees can be found at www.epo.org/applying/forms-fees/international-fees.html.

PCT applications can be filed with certain national patent offices, the European Patent Office or with WIPO (World Intellectual Property Organization) direct.

For an introduction to the PCT procedure before the EPO ("Euro-PCT"), see the Euro-PCT Guide, How to get a European patent, Guide for Applicants, Part 2 at www.epo.org/applying/international/guide-for-applicants.html..


Returning now to our options for patent

protection in Europe, the third route is the

Patent Cooperation Treaty or PCT. The PCT

allows applicants to apply for patents in

multiple member states by means of a single

application, not just in Europe but worldwide

too.

PCT applications do not lead to "international"

patents. Instead, they branch into individual

national patent applications.

There are a number of advantages for the

applicant. In addition to the single application

procedure at the beginning, the formal

standards for the application are harmonised,

including language, patent attorney and fees.

The applicant gets a search report and an

opinion on the patentability of his invention,

and has up to 30 months to decide in which

countries he wants to proceed with his patent

application.


This slide is animated. Each click reveals a further stage in the procedure.

After a patent application has been filed, the first step in the European patent grant procedure is the examination on filing, or formalities examination. This involves checking whether all the necessary information and documentation has been provided, so that the application can be accorded a date of filing.

While the formalities examination is being carried out, a European search report is drawn up, listing all the documents available to the EPO that may be relevant to assessing the novelty and inventive step of the invention. In the search report the patent examiner reports any prior art that is related to the invention and provides an indication of whether or not this prior art conflicts with the claims of the application. The search report is usually (but not always – there is no legal requirement) created and sent to the patent applicant before the patent application is published.

Patent applications can be withdrawn at any time. A common reason for withdrawing an application is if the EPO search report finds substantial conflicting prior art. By withdrawing the patent application early enough the applicant can avoid its publication.

Patent applications are normally published 18 months after the date of first filing of the application. The applicant can request publication of the application before the usual 18 months.

After the request for examination has been made, the EPO examines whether the application and the invention meet the requirements of the European Patent Convention and whether a patent can be granted. It is unlikely that a patent will be granted within three years. Most patents are granted within five years of the application being first filed.

After the EPO has granted a patent, any person can file an opposition during the first nine months of its life and provide evidence that the patent should not have been granted (e.g. because the invention had already been disclosed, etc.). At the end of the opposition proceedings, which only take place if an opposition is filed, the patent can be maintained in full or in amended form or it can be revoked. Generally speaking, the number of patents opposed is quite small.

Slide 22The grant procedure before the EPO (animated slide)

Once the mention of the grant is published, the patent has to be validated in each of the designated states within a specific time limit to retain its protective effect and be enforceable against infringers.

As a rough guide, it currently costs about EUR 5 300 to take a European patent application through to the grant stage. Fees are charged for filing, search, designation of states, claims (if more than fifteen), examination, grant and printing. Renewal fees are also payable for the third year and each subsequent year after the date of filing.

The filing and search fees due at the beginning of the procedure currently amount to about EUR 1 365. The remaining fees are payable later. That means that applicants can decide at each stage of the procedure whether or not to continue with their application.

At the post-grant stage, competence is transferred to the contracting states designated in the European patent. In some contracting states, costs may be incurred for validating the European patent. In order to maintain the patent, renewal fees must be paid each year in each designated state. The overall cost of obtaining a European patent may also include fees for the services of a patent attorney and translation. Further details of these costs can be obtained from any patent attorney authorised to act as a professional representative before the EPO. A searchable database of professional representatives can be found on the EPO website. For frequently asked questions on applying for a patent go to www.epo.org/service-support/faq/own-file.html.

For the latest fee amounts see the Rules relating to Fees at www.epo.org/law-practice/legal-texts/html/epc/2010/e/ma6.html.


The patent grant procedure before the EPO

consists of the stages shown here on the slide.

When an application is filed, a search report is

drawn up listing all the documents available to

the EPO that may be relevant to assessing the

novelty and inventive step of the invention.

This is usually done before the patent

application is published. Applicants can

withdraw their application at any time, for

example if conflicting prior art is found. If

applications are withdrawn early enough, then

the application is not published.

The application is published – normally together

with the search report – 18 months after

the date of first filing of the application. The

published patent application provides some

provisional protection even before it is granted.

After the request for examination has been

made, the EPO examines whether a patent can

be granted. If it decides that a patent can be

granted, it issues a decision to that effect.

Once the mention of the grant of the patent is

published, the patent has to be validated in each

of the designated states within a specific time

limit to retain its protective effect and to be

enforceable against infringers. Different national

requirements with regard to translation,

representation, fees and time limits apply.

Third parties can oppose the patent on the

grounds that it should not have been granted.


Under Articles 99 and 100 EPC, within nine months from the publication of the mention of the grant of a European patent in the European Patent Bulletin, any person may give notice to the EPO of opposition to the European patent granted, invoking lack of patentability, e.g. lack of novelty or inventive step (Articles 52-57 EPC), or lack of a sufficiently clear and complete disclosure of the invention (Article 83 EPC), or that the granted patent extends beyond the application as filed (Article 123(2) EPC).

Oppositions are dealt with by opposition divisions, which are normally made up of three examiners. Opponents are advised to use the official EPO opposition form, which is available free of charge from the EPO and the IP offices of the contracting states. Notice of opposition is not deemed to have been filed until the opposition fee of EUR 745 (2013 figure) has been paid. In practice, opposition proceedings at the EPO are relatively rare.

For more information about oppositions, go to www.epo.org/applying/european/oppositions.html.

The decision to limit or revoke a European patent takes effect on the date on which it is published in the European Patent Bulletin and applies ab initio to all contracting states in respect of which the patent was granted (Article 105b EPC).

Renewal fees will be due for a granted European patent in those states where the European patent takes effect as a national patent. These fees can be expensive, but amounts differ in different contracting states: www.epo.org/law-practice/legal-texts/html/natlaw/en/vi/index.html.

If the annual renewal fees are not duly paid or if the patentee revokes his patent or the patent is revoked, the patent might lapse earlier.

Bringing invalidity proceedings in each country where a European patent has taken effect can be extremely expensive. The fact that a patent has been examined and granted by a patent office is no guarantee that it will remain valid. Courts may find that a patent is invalid even though the patent office had earlier been satisfied of its validity when it examined the same aspects of the application and granted the patent.

Slide 23What can happen after a European patent has been granted?

Infringement proceedings can be lengthy and expensive, and the outcome uncertain. In fact, a common defence for competitors accused of infringing a patent is to argue that the patent is invalid and should never have been granted in the first place. As with invalidity proceedings, infringement proceedings must be brought before the national courts in each country where the European patent has effect (status as at 2013).

From the date of entry into force of the UPC Agreement the exclusive jurisdiction for infringement and revocation actions relating to European patents and unitary patents will as far as the territories of the contracting states of the UPC Agreement are concerned, lie with the UPC (subject to transitional provisions).


After a European patent has been granted, third

parties – usually the applicant's commercial

competitors – may oppose the patent before

the EPO if they believe that it should not have

been granted. They must do so within nine

months of the grant.

The patent proprietor may request the

revocation or limitation of his patent at any

time following grant of the patent.

To prevent the patent lapsing, renewal fees

must be paid every year to the individual

national patent offices.

After the nine-month period for opposition

has lapsed, anyone who wants to challenge a

patent, for example on the grounds that it does

not meet the criteria for the grant of a patent,

must initiate court proceedings.

The rights conferred by a patent mean that its

owner has exclusive rights to prevent others

who do not have the owner's consent from

doing certain things, including making, using,

offering for sale, selling, or importing the

protected product. Infringement proceedings

can be initiated to stop a third party from

performing any of these acts.

Invalidity proceedings and infringement

proceedings must be brought before the

national courts in each country where the

European patent has effect*.

Once the UPC Agreement enters into force,

the exclusive jurisdiction for infringement and

revocation actions relating to European patents

and unitary patents will as far as the territories

of the contracting states of the UPC Agreement

are concerned lie with the UPC.

* Valid 2013.


What constitutes infringement of a patent is determined by the courts in the jurisdiction in which the patent is valid, with reference to the applicable national law. The general principle is that a person not having the patent proprietor's consent is prohibited from certain acts, and that breach of those prohibitions constitutes infringement. Although the rights conferred by a patent are not harmonised in different jurisdictions, international minimum standards that must be applied in each jurisdiction are set out in Article 28(1) of the TRIPS Agreement, which states that:

"A patent shall confer on its owner the following exclusive rights:

(a) where the subject matter of a patent is a product, to prevent third parties not having the owner's consent from the acts of: making, using, offering for sale, selling, or importing for these purposes that product;

(b) where the subject matter of a patent is a process, to prevent third parties not having the owner's consent from the act of using the process, and from the acts of: using, offering for sale, selling, or importing for these purposes at least the product obtained directly by that process."

Source: www.wto.org/english/docs_e/legal_e/27-trips.pdf.

In addition to the international minimum standards set out in TRIPS, many European countries have adopted definitions of "direct" and "contributory" infringement based on the Community Patent Convention (CPC), which, although signed in December 1975, never entered into force since it was not ratified by a sufficient number of member states, and which contains in its 1989 version the provisions on the prohibition of direct or indirect use of the patented invention (Articles 25 and 26 CPC).Fourteen years later, the Agreement relating to Community patents, done at Luxembourg on 15 December 1989, was an attempt to revive the project. This agreement consisted of an amended version of the original Community Patent Convention (CPC), but the attempt failed. Nevertheless, many of the member states of the EEC at that time introduced some harmonisation into their national patent laws in anticipation of the entry in force of the CPC.

Slide 24What is infringement?

Typically, courts in European countries have adopted provisions on infringement based on acts that undermine the right of the patent proprietor to prevent third parties' direct use of the invention, in particular:

– making, offering, putting on the market or using a product which is the subject-matter of the patent, or importing or stocking the product for these purposes

– using a process which is the subject-matter of the patent or, when the third party knows, or it is obvious in the circumstances, that the use of the process is prohibited without the consent of the proprietor of the patent, offering the process for use

– offering, putting on the market, using, or importing or stocking for these purposes the product obtained directly by a process which is the subject-matter of the patent.

In addition, courts in European countries have adopted definitions of contributory infringement based on acts that undermine the right of the patent proprietor to prevent third parties' indirect use of the invention, in particular:

– supplying or offering to supply a person, other than a party entitled to exploit the patented invention, with means, relating to an essential element of that invention, for putting it into effect therein, when the third party knows, or it is obvious in the circumstances, that these means are suitable and intended for putting that invention into effect.

Once the UPC Agreement enters into force, infringement proceedings relating to European and unitary patents will in general be brought before the UPC (subject to transitional provisions).


As a general principle, any person not having the

patent proprietor's consent is prohibited from

certain acts, and breach of those prohibitions

will constitute patent infringement.

Patent proprietors can take legal action,

including filing for injunctive relief and/or

claiming damages from persons considered to

be infringing their patent.

Precisely what constitutes infringement of

a patent may differ in each jurisdiction, and

is determined by the national courts with

reference to the applicable national law.

The competence for infringement and

revocation actions concerning European and

unitary patents will generally lie with the

Unified Patent Court, once it comes into force.

The courts in European countries have adopted

provisions on infringement. Typically, the acts

considered to undermine the right of the patent

owner to prevent third parties' direct use of the

invention include

– making, offering, putting on the market or

using a protected product or importing or

stocking the product for these purposes,

– using a process or offering the protected

process for use, and

– offering, putting on the market, using, or

importing or stocking for these purposes

the product obtained directly by a protected

process.


Slide 25How is infringement determined? (I) (optional, animated slide)

The animated slide is optional OR the example may be replaced by an example of your own.

Firstly, it has to be determined whether an act which has been carried out without the consent of the patent proprietor is prohibited by the applicable patent law. Secondly, whether or not infringement has occurred depends on an analysis of whether the features of the alleged infringing item are covered by the claims of the patent.

Furthermore, even if an act has been carried out without the consent of the patent proprietor and the infringing item is covered by the claims of the patent, there are limitations to the patent proprietor’s rights, i.e. exceptional cases in which this act is not prohibited by the applicable patent law. Such exceptions include for example acts done privately for non-commercial purposes, acts done for experimantal purposes, the use of biological material for the purpose of breeding, and discovering and developing other plant varieties.

The EPC is not primarily concerned with matters of infringement, as this is left to the national courts. However, it does establish the principle by which the scope of protection conferred by patents in the EPC states is to be determined by the claims, with the description and drawings used to interpret the claims (Article 69 EPC).

The Protocol on the Interpretation of Article 69 EPC provides further guidance and is an integral part of the Convention.

In practice this means that the extent of protection basically encompasses everything that is literally covered by the claims, However, it may in some cases also encompass so-called equivalents to the invention covered by the claims. The question of equivalence is, however, a rather vague concept and of even greater complexity than the issue of infringement as such.

For more information see www.epo.org/patents/law/legal-texts/epc.html.

ExampleThe example illustrates the territorial effect of patents as well as what is meant by the extent of protection. It is about two companies that are commercially active in the market for cutting tools.

One of the companies – PAPER-FIX – produce in Italy scissors with eye rings that are covered by plastic. The plastic has good insulation properties, and the user's fingers do not get as cold when cutting paper as they do when using scissors made purely of metal. PAPER-FIX sell these insulated scissors in the UK.

Recently, PAPER-FIX were approached by a company called HAIRY-CUT, accusing them of infringing their patent. HAIRY-CUT's patent was granted for the UK and claims cutting means with two eye rings.

Question: Are PAPER-FIX infringing HAIRY-CUT's patent?

The answer is shown on the next slide.


The question of infringement is rather complex.

In the European patent system, decisions on

infringement are taken by the national courts.

The EPC does, however, establish the principle

that the scope of protection conferred by

a European patent in the EPC contracting

states is to be determined by the claims, with

the description and drawings being used to

interpret the claims.

In practice, this means that the extent of

protection basically encompasses everything

that is literally covered by the claims. However,

it may in some cases also encompass so-called

equivalents to the invention covered by the

claims.

The example shown here is about two

companies that are commercially active in the

market for cutting tools. It illustrates both the

territorial effect of patents, as well as what is

meant by the "extent of protection".

PAPER-FIX is a company that produces scissors

with eye rings that are covered by plastic. The

plastic has good insulation properties. PAPER-FIX

produce the scissors in Italy and sell them in the

UK.

PAPER-FIX have been approached by a company

called HAIRY-CUT, who have accused them of

infringing their patent. HAIRY-CUT's patent was

granted for the UK and claims "cutting means

with two eye rings".

The question is, are PAPER-FIX infringing HAIRY-

CUT's patent?


Slide 26How is infringement determined? (II) (optional, animated slide)

This slide is animated. The first step is to assess whether the acts done by PAPER-FIX constitute acts of infringement. PAPER-FIX produce and sell allegedly infringing products. Production and sale qualify as acts of infringement when they are done without the permission of the patent owner.

The second step is to check the territories in which HAIRY-CUT have patents. They have a patent in the UK. So, if PAPER-FIX infringe HAIRY-CUT's patent, then this can only be the case for their sales activities in the UK.

The third step is to assess the scope of HAIRY-CUT's patent. HAIRY-CUT have patent protection for any cutting means with two eye rings. PAPER-FIX produce special scissors where the eye rings are coved with plastic. As the graphic on the slide shows, the scissors produced by PAPER-FIX fall within the extent of protection of HAIRY-CUT's patent, even if they comprise supplementary features (in this case plastic insulation). PAPER-FIX are therefore infringing HAIRY-CUT's patent. In order to be able to sell their scissors in the UK, PAPER-FIX must get a licence from HAIRY-CUT. Otherwise they may need to stop their sales activities in the UK market.

The situation in Italy is different. As HAIRY-CUT have no patent protection for Italy, the production of the insulated scissors by PAPER-FIX in Italy cannot constitute infringement. PAPER-FIX can therefore continue producing their products in Italy.

PAPER-FIX should check if anyone else has patents covering scissors with plastic eye rings in Italy or the UK – or any other country in which they want to sell them.

Next questionA third company, SHEAR-MAN, import garden shears into the UK.

Are they infringing HAIRY CUT's patent?

Firstly, importing counts as an infringing act.

Secondly, SHEAR-MAN's commercial activities are in a country for which HAIRY-CUT has patent protection, i.e. the UK.

Thirdly, the garden shears imported by SHEAR-MAN do not have eye rings, so they do not fall within the extent of protection of HAIRY-CUT's patent. SHEAR-MAN can therefore continue to import their garden shears into the UK market.

However, SHEAR-MAN should also check if anyone else has patents in the UK that cover this kind of garden shears.


So, are PAPER-FIX infringing HAIRY-CUT's patent?

Firstly, we have to ask ourselves whether the

acts done by PAPER-FIX constitute acts of

infringement. PAPER-FIX produce products and

sell them. Production and sale qualify as acts of

infringement when done without permission.

Then we have to check in which territories

HAIRY-CUT have a patent. They have a patent

in the UK. So, if PAPER-FIX are infringing HAIRY-

CUT's patent, then only in the UK. What about

the scope of HAIRY-CUT's patent?. HAIRY-CUT

have patent protection for any cutting means

with two eye rings. PAPER-FIX produce special

scissors where the eye rings are covered with

plastic. As the graphic shows, these insulated

scissors fall within the extent of protection

of HAIRY-CUT's patent. Therefore, PAPER-FIX

are infringing HAIRY-CUT's patent. PAPER-FIX

must get a licence from HAIRY-CUT in the UK,

otherwise HAIRY-CUT can stop them selling the

scissors on the UK market.

What about in Italy? As HAIRY-CUT do not have

patent protection for Italy, the production of

insulated scissors by PAPER-FIX in Italy does not

constitute infringement. Therefore, PAPER-FIX

can continue producing their scissors in Italy.

By the way, PAPER-FIX should also check if

anyone else has patents in the UK or Italy which

cover scissors with plastic eye rings.

Continuing with our example, let’s imagine that

there is a third company called SHEAR-MAN.

They import garden shears into the UK.

Are SHEAR-MAN infringing HAIRY CUT's patent?

Importing counts as an infringing act. Moreover,

SHEAR-MAN's commercial activities are in the

UK, a country for which HAIRY-CUT have patent

protection. But the garden shears they import

do not have eye rings, so they do not fall within

the extent of protection of HAIRY-CUT's patent.

SHEAR-MAN can therefore continue to import

them.

Once again, SHEAR-MAN should check if anyone

else has patents in the UK that cover this kind of

garden shears.


Patent owners can exclude others from using their inventions. If the invention relates to a product or process feature, this may mean competitors cannot make products with the same features without obtaining a licence from the owner. This gives the owner a competitive advantage that can be turned into profit.

As European patents are examined by the European Patent Office rather than simply registered, the rights they afford are more certain than many other forms of legal protection available for inventions. Patent holders enjoy strong legal protection. For example, if a patent is infringed, the holder can sue for infringement or order customs to intercept imports of the products. However, as we have seen, patent enforcement costs can be substantial.

Patents can be annulled after they have been granted, either by a competitor successfully challenging the patent immediately after grant in an opposition procedure, or as a result of invalidation or revocation proceedings. Another huge benefit of patents is that the invention becomes tradable. Because of the protection offered by the patent, the seller can tell prospective buyers the details of the invention without running the risk of the invention being stolen.

Slide 27Advantages and disadvantages of getting a patent

But patenting also has some drawbacks. First of all, patent applications are published after 18 months. This means that everybody (including competitors) can get a blueprint of your invention 18 months after the filing date or, if priority has been claimed, from the priority date. Furthermore, as we saw earlier, patents can be very expensive if broad international protection is sought.

Sometimes the time lag of several years from application to grant could mean that, by the time the patent is granted, the invention has already become obsolete. However, the published patent application does offer some limited protection, both factual (competitors are faced with the prospect that a patent grant will render their investments worthless) and legal. For details of the latter see Article 67 EPC (www.epo.org/law-practice/legal-texts/epc.html).


The advantages of getting a patent include the

fact that patent owners can exclude others

from using their inventions. In other words,

competitors cannot make products with the

same features without obtaining a licence. This

gives patent owners a competitive advantage.

European patents offer strong legal protection,

as they are examined rather than simply

registered. Patent rights are therefore more

certain than many other forms of legal

protection.

In case of infringement, patent holders can

sue the infringer or order customs to intercept

imports of patented products.

Last but not least, a patent makes an invention

tradable. Sellers can tell prospective buyers the

details of the invention without running the risk

of the invention being stolen.

The disadvantages of patenting include the

fact that patent applications are published

after 18 months, so everybody, including

competitors, can find out about the invention.

The information is available free of charge from

online databases such as Espacenet. However,

the published application does offer some

limited protection, both legal and factual.

Factual means that the prospect of a patent

being granted might discourage competitors

from investing in the commercialisation of a

potentially infringing product.

Finally, patents can be very expensive if broad

international protection is sought. And because

of the time lag of several years from application

to grant, by the time the patent is granted, the

invention may already have become obsolete.

Also, enforcing patent rights may mean going to

court, and this can be expensive.


Instead of patenting their inventions, some inventors opt to keep them secret or simply to publish them, while others do not care about intellectual property rights and do not do any of these.

The most frequent reason for (intentionally) publishing an invention without patenting it is that publishing costs very little compared with patenting. The benefit of publishing the invention is that others cannot apply for a patent on it any more. Inventions must be new in order to be patentable, and if the invention has been published before, then the "second" inventor cannot get a patent. In this way, the "first" inventor makes sure he will not be prevented from using the invention by a third party. The drawback of publishing the invention is that it can no longer be patented by the original inventor. Furthermore, publication will disclose the invention to competitors. Improvements might be patented by a third party and this might block the further development of the initial invention.

Keeping the invention secret is another option to avoid the cost of patenting and at the same time to avoid the invention being revealed to competitors. This is especially useful for manufacturing processes that are difficult to observe or reverse-engineer from the end product. In such cases it is very difficult to find out and prove that a competitor is infringing the patent. Trade secrets therefore offer the benefit of avoiding information disclosure while not sacrificing much of the protection that could be offered by a patent. Keeping an invention secret will often also incur costs, at least the cost of signing non-disclosure agreements with employees and partners. Even though trade secret law offers some protection, it is difficult to enforce. You need to prove that competitors have used unlawful means to find out about your trade secret.

Slide 28Alternatives to patenting

Keeping an invention secret can be risky because competitors can reverse-engineer the invention or independently develop the same invention. They could even file a patent on the invention and might then be able to stop you developing your invention further (although the original inventor cannot normally be stopped from using the invention in exactly the same way as before). Another drawback of keeping the invention secret is that it is often difficult to actually keep secrets. Back in 1985, even before computer security problems could be exploited for industrial espionage on a large scale, a survey found that information on new products and processes became available to competitors on average within a year (Mansfield, 1985: How rapidly does new industrial knowledge leak out?, Journal of Industrial Economics, December 1985).

The final option – to do nothing – is obviously the cheapest way of handling an invention. However, it has no other benefits, and in fact has a number of substantial drawbacks. Other people might patent your invention, preventing you from using it unless you can prove that you used it before. You will not enjoy exclusivity, and everybody will be allowed to copy the invention. And according to the above-mentioned study, it is very likely that it will not be long before others find out about your invention. Other non-patenting options include lead-time advantages (being the first to introduce the product to the market), learning curve effects (starting to learn about the technology earlier and thus maintaining a technical advantage), network effects (creating a user base or a technical standard first) and customer relations. In surveys, these means have been found to be at least as important as patent protection and other legal instruments. However, they are not only employed as alternatives to patent protection, but are instead often used in conjunction with them.


What are the alternatives to patenting?

One option is to publish the invention in

any newspaper, magazine, journal, book or

public prior art database. Publication prevents

others from applying for a patent on the same

invention – although other prior patents

might effectively block its use. At the same

time, it discloses the invention to competitors,

so improvements might be patented by a

third party and this might block the further

development of the initial invention.

Another option is to keep the invention

secret. This is frequently used, especially for

inventions that do not qualify for patent

protection, and for production processes that

cannot be reverse-engineered by analysing

the end product. In the latter case, patent

infringement would be very difficult to prove,

so a patent might not be very effective. This

option is inexpensive, although there is some

cost involved in the signing of non-disclosure

agreements with employees and/or partners.

Trade secrets are, however, difficult to enforce,

and proof is needed that competitors have

used unlawful means to find out the secret. On

average, detailed technological information will

leak out within a year.

The third option is to do nothing at all.

Other options have been found to be at least

as important as patent protection and other

legal instruments. These include lead-time

advantages, in other words being the first to

introduce the product to the market, learning

curve effects, which involves starting to

learn about the technology earlier and thus

maintaining a technical advantage, network

effects – creating a user base or a technical

standard first – and customer relations. All of

these options are often used in conjunction

with patents, rather than to replace them.


Slide 29What to consider before filing an application (animated slide)

This slide is animated. Each click reveals a further stage in the procedure.

If an invention is patentable it does not always follow that it will result in a commercially viable technology or product. Therefore, a careful weighing of the pros and cons is essential before filing a patent application. As patenting an invention can be very costly, you should also look into alternatives such as secrecy or utility models.

Think ahead and give some thought to the commercialisation of the invention as early as possible. A cost/benefit analysis should take into account the following questions. Is there a market for the invention? What kind of investment will it take to bring the invention to the market? Will you need technical and/or financial assistance from other companies to commercialise the invention? Having a patent is a distinct advantage if you are likely to seek financial support from venture capitalists or other investors. The potential markets and production sites will influence your decision in which countries to apply for a patent.

In order to get a first impression if an invention is new it is worth spending time on a prior art search. A prior art search can prevent you from wasting money on a patent application, in case the search reveals prior art documents that are likely to render the patenting of your invention impossible. Many online databases such as Espacenet give free access to patent documents. Ideally, the search should also cover the relevant technical and scientific journals, conference proceedings and websites of companies in the field. Professional search services are also available.

In order to get a clear picture of the patentability issues it is highly advisable to seek the advice of a patent professional at an early stage.

In many countries, national law or employment contracts require employees to transfer their rights to an invention to their employer (see also Article 60 EPC). It is important to find out about the specific legislation to avoid future disputes.

Employees or business partners who have contributed financially or technically to the development of an invention may also have acquired rights, so you should clarify all outstanding issues over the rights to the invention before filing any application.


What sort of things should you consider before

deciding to file an application for a patent?

An invention may not always result in a

commercially viable technology or product, so

it is important to consider the advantages and

disadvantages of patent protection. You should

look into alternatives such as secrecy or utility

models. You should also make a cost/benefit

analysis. Is there a market for the invention?

What kind of investment will it take to bring

the invention to the market? Will you need

technical and/or financial assistance from other

companies to commercialise it?

You should get legal advice on whether the

invention is patentable. You can of course

perform a patent search yourself using free

online databases such as Espacenet, or have

the search done by a professional service. You

can also search relevant technical and scientific

journals, conference proceedings and websites

of companies in the field. But professional legal

advice is a must.

Last but not least, you should clarify ownership

of the invention. National law in your country,

or your employment contract, may require you

to transfer your rights to the invention to your

employer. Employees or business partners who

have contributed financially or technically to the

development of the invention may also have

acquired rights, so it is important to clarify all

outstanding issues before filing the application.


Patenting may not always be the right solution for your business. It is therefore important to understand what might happen if your company decides not to patent a patentable invention.

Somebody else might patent itIn most countries, where more than one person has filed a patent application for the same invention, the first person to apply will have the right to the patent. This means that if you do not patent your invention or if you file your application too late, somebody else might get a patent. As a consequence, the patent-holder will then be able to hinder you from entering the market. You will need to obtain a licence for using the (your own) invention.

Competitors will take advantage of your inventionIf the product is successful, competitors will be tempted to make the same product by using your invention but without having to pay for such use. As they do not need to make up for the R&D costs you have invested they are likely to be able to produce a commercial product more cheaply and to compete at a lower market price. This can reduce your market share considerably.

The potential for licensing, selling or transferring the technology will be severely curtailedNobody is willing to pay for the right to use something that does not belong to anybody. Therefore, opportunities for licensing are severely hampered.

Slide 30What might happen if I decide not to patent my invention? (animated slide)


Patenting may not always be the right solution

for your business. It is therefore important to

understand what might happen if you decide

not to patent a patentable invention.

First of all, somebody else might patent it. The

first person to apply has the right to the patent.

If you do not patent your invention, somebody

else might get a patent on it instead. The

patent-holder would then be able to exclude

you from the market and you would need a

licence for the product.

Secondly, competitors may take advantage of your

invention. They may well be tempted to make the

same product by using your invention but without

having to pay for the use. And as they would incur

virtually no R&D costs, they would be able to

compete at a lower market price.

And finally, the potential for licensing, selling or

transferring the technology would be severely

curtailed. Nobody is willing to pay for the right

to use something that does not belong to

anybody.


Patents can be used for a variety of purposes. The most frequent one is to protect a company's products or processes from imitation. This is of obvious importance for the company's profits.

In the world of high-tech start-ups in particular, a company's expected economic success often critically depends on its IP rights, because larger competitors already exist who could otherwise simply copy the invention and sell it more cheaply. Investors will often refuse to invest in a new high-tech company if it does not have strong patents protecting its technology. Thus, patents also play an important role in attracting funding for new ventures.

Patents can serve other purposes beyond protecting a company's products. For example, owners can license their patents to other companies or use them to block the research efforts of their competitors (efforts that might endanger their own technological lead). And certainly there are patents that are simply not used.

A large-scale empirical study financed by the European Commission collected information from the inventors of more than 7 000 European patents in a range of industries. The results give an insight into how patents are actually used.

Slide 31How patents are used

"Internal use" means that the patent is used to protect aspects of products the company manufactures or aspects of their manufacturing process. "Licensing" means the patent owner allows another company to use the invention for royalty fees. "Cross-licensing" means that two or more companies exchange licences to their patents. "Blocking competitors" means that the patents are not used to protect their own products or processes, but ‘just' to hinder competitors from using the invention. "Sleeping patents" are those currently not used for any purpose.

There are large differences in the use of patents depending on country, industry and size of the company. For example, the percentage of patents used for licensing is much higher in biotechnology.

Licensing can be a means of benefiting from the invention without having to actually produce the products and/or set up a company. However, according to recent empirical re-search, collecting royalties is not the only focus of licensing activities (see below). In particular, giving licenses is often a means of gaining access to the patents and knowledge of other companies. Getting access to third-party patents can be crucial. In industries where inventions build upon each other and many patents are needed to be able to make a product (such as in semiconductors and telecommunica-tions) cross-licensing agreements are the norm.

Patent use Internal Licensing Cross- Licensing Blocking Sleeping Total use (%) (%) licensing and use competitors patents (%) (%) (%) (unused) (%) (unused) (%)

Electrical 49.2 3.9 6.1 3.6 18.3 18.9 100.0 engineering Instruments 47.5 9.1 4.9 4.3 14.4 19.8 100.0 Chemicals and 37.9 6.5 2.6 2.5 28.2 22.3 100.0pharmaceuticals

Process 54.6 7.4 2.0 4.9 15.4 15.7 100.0engineering

Mechanical 56.5 5.8 1.8 4.2 17.4 14.3 100.0engineering Total 50.5 6.4 3.0 4.0 18.7 17.4 100.0

Distribution by technological class. Number of observations = 7 711.Source: Giuri et. al. (2007): Inventors and invention processes in Europe: Results from the PatVal-EU survey, Research Policy, No. 36, pp. 1107-1127.


A survey of more than 7 000 patents showed

that 50% were used to protect companies’

own products and processes. 6% were used

for licensing only, 4% for licensing and use,

3% for cross-licensing, and 19% for blocking

competitors, and 17% had not yet been used.

It also established that there were substantial

differences depending on country, industry

sector and company size.

Cross-licensing is very important for certain

industries. For example, ordinary mobile

phones have to use technology protected by

so many different patents that most mobile

phone companies have made cross-licensing

agreements to allow each other to use their

respective patents.


This chart illustrates the results of a large-scale empirical study carried out in 2005. It shows the distribution of the value of patents granted by the European Patent Office. According to these estimates, about 45% of all patents are worth up to EUR 300 000, about 20% are worth between EUR 300 000 and EUR 1 million, and 10% are worth between EUR 3 and EUR 10 million.

Background A questionnaire was sent to the inventors of a random sample of patents applied for at the European Patent Office between 1993 and 1997. The questionnaire was returned by 9 600 inventors out of the 27 000 polled. In one of the questions, the inventors were asked, given all the information they had learned so far, to estimate the amount of money the patent owner could have sold the patent for to his strongest competitor on the day the patent was granted. Inventors responded by choosing one of the ten value categories shown here. For more information seehttp://ec.europa.eu/internal_market/indprop/docs/patent/studies/patentstudy-report_en.pdf

Slide 32The value of European patents (optional)


A survey of 9 600 inventors of applications

filed with the EPO between 1993 and 1997 was

carried out in 2005, some time after the patents

had been applied for. The inventors were asked

to estimate the amount of money the patent

owner could have sold the patent for to his

strongest competitor on the day the patent was

granted. The chart shows the distribution of the

value of patents issued by the EPO.

As we can see from the results, about 45% are

worth up to 300 000 euros. About one in ten is

worth between 3 and 100 million euros.

The distribution is skewed. Many patents have

a low value and very few patents have a high

value.


Researchers, scientists and engineers do not always review what has already been invented before starting a new project. As a result, many of their research projects yield results that others have not only already published, but perhaps also even patented. In many cases, inventors only find out that "their" invention has already been patented when informed to this effect by the patent office examining their application.

The precise extent of this duplication of R&D efforts is not known, as statistics are not available. But because patent offices search for prior inventions for each and every patent application they receive, they have some idea of the extent of the phenomenon. The Austrian Patent Office estimates that, in Europe, EUR 60 000 million are wasted each year on inventing what has already been invented (Annual Report 2006).

In 2005, the president of the Association of Austrian Inventors noted that the extent of duplication in R&D means that "up to 10 000 of the 30 000 inventors active in Austria work to no avail" (Mario Wally (2005): "Doppelt gemoppelt", profil extra, February 2005, 24-25). ProVendis, the technology transfer agency of a number of German universities, estimates investments in duplicate R&D in Germany to be EUR 12 000 million per year, or 25% of total R&D spending.

Lessons to be learned – Search the literature, patents and other information

sources before starting any project. – Search again at project milestones; your project goal

might have changed and other inventors might have been active too.

Slide 33Re-inventing the wheel – literally

Reinventing aircraft wheelsThis slide gives estimates for the extent of the duplication of R&D efforts and presents a real-life example in which someone literally reinvented the wheel. In 2000, a patent application was filed for an invention that solves the problem of excessive wear (or even explosion) of aircraft wheels due to high acceleration when touching the ground. It uses small pockets on the side of the tyres that make the wheels spin in the wind without the need for an additional electrical motor. What the inventor did not know was that this invention had already been made in the early days of airplane technology. A US patent application that described the same invention had been filed (and almost forgotten) way back in 1929.

This case highlights two important points: − Searching the patent literature is worth the effort. − The problem you are looking to solve might already

have been solved, and the solution might even be free to use (the 1929 patent expired some time ago).


According to the figures provided by the

Austrian Patent Office in its annual report 2006,

the replication of R&D results costs anything up

to EUR 60 000 million a year in Europe alone.

The President of the Association of Austrian

Inventors estimated that up to 10 000 of the

30 000 inventors who are active in Austria work

"to no avail". The technology transfer agency

ProVendis estimates that 25% of all German

R&D investment is wasted by duplicating R&D

that has already been done.

In the example shown on the side, the

application relates to the technical problem of

the excessive wear or even explosion of aircraft

wheels due to high acceleration when touching

the ground. The proposed solution provides for

small pockets on the side of the tyres that make

the wheels spin in the wind without the need

for an additional electrical motor. This invention

had already been made in 1929, when a US

application was filed which described it.

The key message here is, always perform a

prior art search! You should check the literature,

including articles and patents, before you start

your project. You should also search again at

various project milestones. Your project might

have changed and other inventors might have

been active, too.


This slide is animated. Patents are a unique source of information. Studies have shown that in some technical fields around 80% of the information contained in patent documents cannot be found anywhere else. The exact percentage depends on the technical domain and the value of the knowledge. The more valuable a piece of scientific or technical knowledge, the more likely it is that it will be published in a patent. In a recent large-scale study in the field of chemistry, a total of 34 000 new chemical compounds in various domains such as polymers, alloys, etc. were traced in scientific journals and in the patent literature. It was found that, depending on the field, up to 77% of new compounds were published in patents only, and not in journals. In total, 10 300 compounds (30%) could only be found in patents. Only 1 200 compounds documented in patents (11% of what was found in patent documents) had also been published in journals.

In addition to the absence of many R&D results from journals, there is another important difference between the two information sources: research papers focus on the findings of the research (their contribution to science), while patents focus on how to actually make the invention work.

Reviewing the journal literature only would mean missing out on a large amount of valuable knowledge. Furthermore, companies often do not want to disclose their new product development activities and do not publicly report such information. But very few companies intentionally forgo patent protection for the sake of surprising competitors with new products. As all patent applications are published just 18 months after the priority date, patent data contains new information on a company's new product development activities which cannot be found elsewhere.

The time factorPatent applications take 18 months to be published. This may seem like a long time. But publication in peer-review journals takes time too. In many cases, the patent application will be published before the corresponding academic paper.

Slide 34Solutions found in patent documents (animated slide)

Additional benefits of patent information

– Patents have a uniform structure throughout the world.

– Almost all patents can be viewed free of charge. So access to them does not depend on your library's financial budget.

Most documents in patent databases concern inventions that are free to use by everyone. Depending on the patent office, the figure can be as high as 90%. This is due to several reasons:

– A substantial number of all published patent applications are withdrawn by the applicant or rejected by the patent office. This means that these patent applications never became patents. Although an application might have been withdrawn, the published application document can still be retrieved (except if the application was withdrawn before the publication was made). Furthermore, some patents are found to be invalid in opposition proceedings or in the courts.

− To maintain a patent, the applicant or owner must pay renewal fees. If the patent does not appear economically attractive any more, the owner will discontinue payment of the renewal fees and the patent will lapse. From that point in time onwards, anybody can use the patent for free. This does not only apply to worthless inventions; patent holders may not have realised the full potential of a patent or they may have simply abandoned it because it did not relate to their core business.

− Even if renewal payments are made, a patent will last a maximum of 20 years from the date of filing (with some exceptions). Thus, almost all patents filed more than 20 years ago are free to use. There are many examples of "old" inventions that are not necessarily outdated, including pharmaceuticals, superconductors and the internet (invented in 1973!).


In some technical fields approximately 80% of

the information that can be found in patents

is not available anywhere else in comparable

detail. Patents focus on how to make things

work, while scientific articles focus on the

scientific contribution.

Also, your competitors will "announce" their

new products in patents if they want to have

patent protection!

There are a number of reasons why most

patent documents describe inventions that

are free to use. Firstly, the application may

have been rejected or withdrawn or the patent

invalidated. Secondly, payment of the renewal

fees may have been discontinued if the owner

saw no further value in the patent. And finally,

the patent may have lapsed.

"Old" solutions are not necessarily "outdated".

Just think, for example, of antibiotics,

superconductors or the internet, which was

invented back in 1973.


Everyone involved in research and development activities should be aware of patents. Even if you have not yet reached the stage of filing a patent application, the technology described in the EPO’s free databases can be very valuable. The EPO and many other patent offices offer free patent databases. What is special about the EPO's Espacenet database is that it contains most worldwide patents in one database. The amount of technical information in this patent documentation collection is phenomenal, with data from 1836 up to the present day. The EPO's databases are probably the largest single source of information on technology in the world today.

At www.espacenet.com you will find not only the search interfaces, but also online help and many tools that make finding patents easier.

Espacenet offers both a simple quick search and more advanced search options. To start with you could try using the quick search function to search for the name of a well-known researcher.

When viewing a patent in Espacenet, you get links to other patents cited in the prior art search report and to the patents that cite the patent that you are viewing. You will also find information about the countries in which protection is sought and links to the legal status information.

Slide 35Searching for patents is easy


Anyone involved in research and development

activities needs to be aware of patents. Even if

you have not yet reached the stage of filing a

patent application, the technology described in

the EPO’s free databases can be very valuable.

Espacenet is easy to use and contains more

than 80 million documents from 80-plus

countries, covering data from 1836 to today.

It is probably the largest single source of

information on technology in the world today.

Free to use, it has forward and backward

citations and an online translation tool

providing machine translations between English

and 22 other languages.

You can use Espacenet to watch new

technologies emerge, find solutions to your

technical problems, discover what your

competitors are developing, and identify

potential business partners.


This is an animated slide. Click through the four examples.

Simple or "naïve" keyword searches have very limited effectiveness. When describing their inventions, applicants frequently use broad concepts instead of intuitive keywords, either to broaden the scope of the patent or to deliberately make it harder to find.

The examples of patent jargon shown here are meant to provide an amusing conclusion to the lecture. You may like to introduce them with a humorous comment, along the lines of: "We engineers like to call a spring a spring. But that's not how patent attorneys see it. Let's have a look at the language they use."

Slide 36… but a basic knowledge of patent jargon is needed (optional, animated slide)


Engineers like to call a spring a spring. But that’s

not how patent attorneys necessarily see it.

Let’s have a look at the kind of language they

use.

Simple, "naïve" keyword searches have very

limited effectiveness, because applicants and

attorneys will often use the kind of jargon

shown on the slide to broaden the scope of the

patent or to deliberately make it harder to find.


This slide is animated.

1. Can anyone apply for a patent? Patent applications can be filed by the inventor or

the inventor's employer. Inventions are usually the property of the company that employs the inventor. The inventor has the right to be named on the application/patent.

2. Who is the inventor? The inventor is the person who conceived the

invention. He has the right to be named on the patent document.

3. What is the difference between patent holders and inventors?

The person or company who files the patent application is the applicant, holder or owner of the patent. The applicant is often the company or research institution that employs the inventor. The inventor may also be the applicant.

4. What can you get a patent for? Patents can be obtained for inventions in a technical

field, for instance a product, a process or an apparatus.

5. What are the requirements for obtaining a patent? An invention is defined in the patent claims. It must

be new, inventive and susceptible of industrial application.

6. What is the term of a patent? The term of a patent is the length of time for which it is

valid. Patents can be valid for up to 20 years, or longer in certain technical fields (such as pharmaceuticals).

Slide 37Quiz (optional, animated slide)

7. What routes are there for obtaining a patent in Europe?1. Filing an application with a national office:

one application per country.2. Filing with the European Patent Office:

via one application applicants can obtain protection in up to 40 European countries.

3. Filing an international patent application (PCT) with certain patent offices worldwide: one application at the initial stage. Applicants can proceed with national applications in the countries they choose at a later stage.

8. What is the difference between a patent application and a patent?

A patent application is the set of documents the applicant needs to file in order to request the grant of a patent. If the application fulfills the necessary requirements, the patent office grants a patent on the basis of these documents.

9. Even if an invention is patentable, is it always wise to apply for a patent?

Filing a patent application is a business decision. A cost/benefit analysis is necessary to decide this. Other means of protection may be an option.



2 Patent case study

86 EPO/OHIM Intellectual Property Teaching Kit – IP Advanced Part I Patent case study


Patent case studyList of slides

Slide 38 Patent case studySlide 39 Two companies with two very

different IP strategiesSlide 40 QuestionSlide 41 AnswerSlide 42 What did Xerox PARC do wrong?Slide 43 What do all these companies

have in common?Slide 44 What happens if you don’t

protect your IP?Slide 45 How did Xerox learn from this

experience?Slide 46 A different approach:

The case of Célula 3PPSlide 47 What did Célula 3PP do?Slide 48 Célula 3PP’s IPSlide 49 A success story thanks to IPSlide 50 Online resources

Patent case study


Slide 38Patent case study

EPO/OHIM Intellectual Property Teaching Kit – IP Advanced Part I 89Patent case study


This case study is based on the example of two companies with two very different patent and IP strategies. One is a big, internationally known company that made some IP mistakes early on in its life which allowed others to benefit from its R&D efforts. The other is an SME that sought help from a patent information centre and was advised to patent its inventions and register its trade marks and designs.

The case study will illustrate how patent protection prevents others from using your technology and the results of your work for free. Patents can act as ‘flags’ to let others know we own that technology and that we are experts in that field, attracting investors, top collaborators and companies to partner with. The strategic use of patent information can help you keep track of competitors' R&D, and patent monitoring can help prevent and avoid infringement suits.

Slide 39Two companies with two very different IP strategies


This case study is based on the example of two

companies with two very different patent and

IP strategies. One is a big, internationally known

company that made some IP mistakes early on

in its life which allowed others to benefit from

its R&D efforts. The other is an SME that sought

help from a patent information centre and was

advised to patent its inventions and register its

trade marks and designs.


According to Wikipedia, a disruptive innovation is an innovation that helps create a new market and value network, and eventually disrupts an existing market and value network (over a few years or decades), displacing an earlier technology. The term is used in business and technology literature to describe innovations that improve a product or service in ways that the market does not expect, typically first by designing for a different set of consumers in a new market and later by lowering prices in the existing market.

Slide 40Question


Do you know which company invented all

these disruptive technologies in the 1970s?

The answer may surprise you.


All these technologies were invented by Xerox PARC. PARC stands for Palo Alto Research Center. Founded in 1970 as a division of Xerox Corporation, Xerox PARC is a research and development company in Palo Alto, California with a distinguished reputation for its contributions to information technology and hardware systems.

It pioneered the personal computer, the point-and-click graphical user interface (GUI), the laser printer and the Ethernet (Xerox private LAN), but it never earned a big profit from them, because it failed to patent the technologies involved. Great ideas were lost in the copier giant's bureacracy, as it did not invest in patenting anything outside the company's core business of copy machines.

Slide 41Answer


The answer is Xerox PARC. The company

invented the personal computer, the point-and-

click graphical user interface or GUI, the laser

printer and the Ethernet.


If it’s not patented, it’s not protected!

Anyone can take advantage of your invention if you don’t protect it. That’s why you should always apply for a patent or keep your work secret until you do.

If you do not apply for a patent, anyone could buy one of your products and reverse engineer it to find out how it is made and replicate it with a different brand.

You should at least keep them secret, in case you decide to patent when the conditions are right. You should not disclose them or the competition may copy or improve upon them.

If you don’t protect your IP, other companies or individuals can freely use the results of your work.

Slide 42What did Xerox PARC do wrong?


If you don’t protect your innovations, other

companies or individuals are free to use the

results of your work.

This is what happened to Xerox PARC.

And if the time is not right, at least keep them

secret so they don’t lose novelty or get copied

by the competition.


All these companies benefitted from inventions that were originally made by Xerox PARC.

Apple's Macintosh computer GUI was inspired by a tour of PARC that Steve Jobs took in 1979. Jobs did the same with UNIX as the basis for the MAC OS and with PortalPlayer as the platform for the iPod, making him and Apple the precursors of Open Innovation.

Later, Xerox’s GUI also inspired Microsoft Windows.

Xerox developed one of the first PCs (ALTO), but IBM became famous for inventing the PC. The laser printer is in HP’s hall of fame, but it was first invented by Xerox.

According to "Rembrandts in the Attic: Unlocking the Hidden Value of Patents", by Rivette and Klein (2000), "The failure to patent the results of innovative research can also lead to huge financial and strategic losses, as illustrated by Xerox’s decision in 1979 not to patent its invention of the graphical user interface (GUI) that later formed the basis of Apple’s Macintosh and Microsoft’s Windows personal computer operating systems.".

According to a 2011 article by Lucy Kellaway in the Financial Times Online, "Even Apple, which is always held up as an example of a company that does things its own way, built some of its most important technology after Steve Jobs first saw it at Xerox." (www.ft.com/intl/cms/s/0/9bde4020-06eb-11e1-90de-00144feabdc0.html#axzz1dbzIiDZf )

Slide 43What do all these companies have in common?


What do these companies have in common?

They all benefitted from inventions originally

made by Xerox PARC.

Apple's Macintosh computer GUI was inspired

by a tour of PARC that Steve Jobs took in 1979.

Later, Xerox’s GUI also inspired Microsoft

Windows.

Xerox developed one of the first PCs – the ALTO

– but IBM became famous for inventing the PC.

The laser printer is in HP’s hall of fame, but it

was first invented by Xerox.


Slide 44What happens if you don't protect your IP?


If you don’t protect your intellectual property

and your R&D results, anyone can use this

knowledge and information for their own

benefit.

In the vast majority of countries, disclosing your

invention before filing a patent application

means that it will no longer be new, which in

turn means that you cannot protect it, and

others may profit from it.

Also, if you patent your invention in one

country, others can copy and replicate it in a

country where you didn’t file for protection.

Besides protecting your intangible assets,

patents act as ‘flags’ or ‘lighthouses’ that

attract talent, investors, customers and

partners.


To make sure that this did not happen again, Xerox set up XNE (Xerox New Enterprises) to exploit the new inventions generated by PARC. They now license technologies to other companies for a fee or royalty.

Some of these technologies are spun off, earning huge returns when the companies go public on the stock market. Xerox also set up XIG (Xerox Innovation Group) to manage R&D, intellectual property, business development for licensing and new business opportunities. More information can be found at www.xerox.com/innovation/enus.html and www.xerox.com/downloads/usa/en/innovation/innovation_xig_brochure.pdf

Slide 45How did Xerox learn from this experience?


What did Xerox learn from this experience?

What new strategies did they adopt?

They created a company called XNE - or Xerox

New Enterprises – to exploit new inventions

generated in PARC, and they license these

technologies for a fee or royalty.

Some of these technologies are spun off,

earning huge returns when the companies go

public on the stock market.

They also set up XIG – the Xerox Innovation

Group – to manage R&D, intellectual property,

business development for licensing and new

business opportunities.


Slide 46A different approach: the case of Célula 3PP


Célula 3PP is a Portuguese micro-company

which was set up as a spin-off from TOPO, a

well-established mould company in Portugal's

Marinha Grande region. The Marinha Grande

region is known around the world for its mould

industry, which produces precision moulds

for the plastics, glass and crystal industries,

with companies such as Samsonite, Mercedes-

Benz, Porsche and Nokia relying on the area's

engineering and expertise.

This industry is very innovative and

technologically advanced, competing

worldwide and maintaining a strong presence

in the market. In general, the mould companies

are small and medium-sized (15 employees

on average). They work by the principle

of production on demand and are very

customer-driven.

Célula 3PP was set up in response to a challenge

from one of TOPO's customers to make a

cheaper and more efficient valve than those

currently on the market.

But how could they find out the features of

all the other valves in the market? How could

they be sure that they would not be copying

somebody else’s valve and infringing their

rights?


To find out about the valves already on the market, Célula made use of the patent information resources available online.

The EPO's Espacenet database (www.espacenet.com) is an excellent resource because it also allows users to access the examiners' search reports via a link to the European Patent Register.

Although several of the patents Célula 3PP found were in the public domain, making them free to use, they went on to develop a new air and liquid valve made of polypropylene (PP) which did not infringe any patents already in force.

The information they found in the patent literature allowed them to avoid mistakes and leveraged their knowledge about materials suitable for the valve they wanted to develop.

Slide 47What did Célula 3PP do?

They also obtained advice from their regional IP support office.

The company then obtained a development grant of EUR 1 million at an innovation fair. At the time of writing (2014), a number of companies are already interested in the product, and Célula plans to launch the product on the market in two to three years' time.

Other sources of patent information:– Intellectual Property Digital Library

(http://ipdl.wipo.int/)– United States Patent and Trademark Office

(www.uspto.gov)– PatentScope (www.wipo.int/pctdb/en)


To find the answers to these questions,

Célula 3PP searched in a number of sources,

including the EPO’s Espacenet database, WIPO’s

Intellectual Property Digital Library, the website

of the United States Patent and Trademark

Office and WIPO’s PatentScope database.

Espacenet is an excellent resource because it

also allows access to examiners’ search reports

via a link to the European Patent Register.

Although several of the patents found were in

the public domain, making them free to use,

Célula developed a new air and liquid valve

made of polypropylene (PP) which not infringe

any existing patents. The result was the valve

shown here on the slide.

What IP rights do you think the company could

and should apply for?


Slide 48Célula 3PP's IP


Célula 3PP filed an international patent

application under the Patent Cooperation

Treaty to cover all major markets and protect

their intellectual work. A European patent

based on this application has been already

granted.

They also filed an industrial design application

and considered registering the name Tethys as a

trade mark.

What other IP rights could they have applied

for?

They could have applied for

– a trade mark for "Célula 3PP"

– a domain name such as www.celula3pp.pt or

www.tethys.pt

– utility models, for subsequent improvements

to the valve.

They could also have considered designations

of origin or geographical indications such

as "Made in Portugal" or "Made in Marinha

Grande".


The valve can be used in industry (agriculture, washing machines, industrial cleaning, etc.) or for domestic purposes (gardening, cleaning, etc.). Célula obtained a grant of EUR 1 million for developing it, and several companies are already interested in it.

Slide 49A success story thanks to IP


To conclude, the success of the Célula story is

based on their use of patent information to

find out about existing valves, so that they

could create an air and liquid valve unlike any

other on the market, and the creative insights

they obtained from their analysis of more than

30 patent documents relating to existing valves.

The result was a new product made of

polypropylene. An international PCT application

was filed in 2008 and published in 2009, a trade

mark was registered and a US design patent

acquired. A European patent based on the PCT

application has already been granted.

Without the patent analysis procedure, and

without the help of the regional IP support

office, the product may never have got off the

ground, or might have been very different.


More about patents and other forms of IP– www.epo.org– www.espacenet.com– www.wipo.int– http://patentscope.wipo.int/search/en/search.jsf– www.wipo.int/wipogold/en/

More about Xerox and PARC inventions– http://en.wikipedia.org/wiki/Xerox – http://en.wikipedia.org/wiki/Xerox_PARC

More about Célula 3 PP – http://lngroup.swork.biz/celula3pp/index.php?id=1229 – http://patentscope.wipo.int/search/en/WO2009110813

Slide 50Online resources


Here are some links to sources of further

information.



3 Patent exercises

116 EPO/OHIM Intellectual Property Teaching Kit – IP Advanced Part I Patent exercises


Patent exercisesList of slides

Slide 51 Patent exercisesSlide 52 About this moduleSlide 53 Cover page of a typical patent

documentSlide 54 The parts of a patent document (I)Slide 55 The parts of a patent document (II)Slide 56 More about the claimsSlide 57 Requirements for patentabilitySlide 58 The test for noveltySlide 59 Two examplesSlide 60 Sugru (I)Slide 61 Sugru (II)Slide 62 What does sugru look like?Slide 63 History of the sugru patentSlide 64 Exercise 1Slide 65 Claims at the PCT stageSlide 66 Claim 1 of the PCT applicationSlide 67 Is it novel?Slide 68 What did the applicants do next?Slide 69 Comparison between original PCT claim

1 and the amended EP versionSlide 70 Patent status of sugru as of March 2013Slide 71 Example 2: Hövding airbag cycle helmetSlide 72 What does the airbag helmet look like?Slide 73 Exercise 2Slide 74 What did Hövding claim in their PCT

application?Slide 75 Claim 1 of Hövding's PCT applicationSlide 76 Is it novel?Slide 77 What did the applicants do next?Slide 78 Comparison between original PCT

claim 1 and the amended claim Slide 79 What did the examination report say

and what happened next?

Patent exercises


Slide 51Patent exercises

EPO/OHIM Intellectual Property Teaching Kit – IP Advanced Part I 119Patent exercises


Students should be able to look at a patent document and make sense of what all the different dates mean. The importance of dates – in determining novelty, for instance – is a core concept. Students also need to be aware that the claims determine the scope of protection conferred by the patent and the extent of the exclusive rights. It is the patent attorney’s job to write claims which will give the maximum scope of protection. However, as a patent application proceeds through the examination process, the claims are likely to evolve. Certain claims may not be allowed and some may be allowed only in restricted form, depending on whether the claimed invention is novel, involves an inventive step and is industrially applicable.

This module starts with a recap of the information from the patents advanced module. What does a patent document cover page look like? What do the different dates mean? What are the different parts of a patent document? What happens during the examination procedure? And what are the requirements for patentability, including novelty and inventive step?

Two case studies are discussed – sugru (hand mouldable self-curing rubber) and the Hövding airbag helmet, both of which originated in universities in Europe – and a number of exercises are provided.

Slide 52About this module


We will start this module with a recap of

some of the most important information

about patents. We will look at the cover

page and various other parts of a typical

patent document, and the requirements for

patentability.

We will then look at two case studies

concerning inventions originating from

European universities. These case studies

will be accompanied by exercises to test your

knowledge and understanding of patents and

patenting.


Slide 53Cover page of a typical patent document

For a general explanation, see slide 9, "What do patent documents look like?" (p. 26). German patents, for example, start with DE. CN stands for China, CA for Canada, JP for Japan, and so on, in accordance with the international two-letter country codes (http://ep.espacenet.com/help?locale=en_EP&method=handleHelpTopic&topic=countrycodes).

The Patent Cooperation Treaty (PCT) is an international treaty enabling applicants to seek protection for their inventions in 148 countries by means of a single international patent application. The PCT system is administered by the World Intellectual Property Organization (WIPO) (www.wipo.int/pct/en/). The international patent application was published as WO1999/056566 on 11 November 1999 (87).

Paragraph (73) identifies the owner/proprietor of the patent. It is important to distinguish between the patent proprietor/applicant and the inventor. Obviously, the inventor is the person who created the invention. He may also be the applicant or proprietor. However, the ownership of or right to apply for a patent is frequently passed from the inventor to, for example, his employer by virtue of an agreement or assignment. Such assignments are recorded at the patent office so that the public can understand how the ownership came about. In our example, the invention was made by four people whose names are given in paragraph (72). The proprietor of the patent is the company Ajinomoto Co., Inc. of Japan (73).


The slide shows the cover page of a typical

European patent. The information on it

provides a wealth of detail about the filing itself

and the parties involved. Let’s examine each of

the sections marked on the page.

In the top right-hand corner is the number,

EP1075798B1. EP indicates that the document is a

European patent. 1075798 is the unique number of

the patent. The B indicates that this is a granted

patent. An A at the end of the number would

indicate that it is a patent application.

The date of publication and mention of the

grant of the patent – the date on which the

grant of a patent took effect – is shown in

paragraph (45).

The international application number is PCT/

JP1999/002310, as shown in paragraph (86).

This number indicates that the application

was filed via the PCT route in Japan – "JP" – in

1999. Paragraph (22) gives the precise date of

filing as 28 April 1999. The application number

is 002310. As we can see in paragraph (87), the

international patent application was published

as WO1999/056566 on 11 November 1999.

Paragraph (30) indicates the priority dates and the

numbers of any patent applications from which

priority was claimed. In this example, priority

was claimed from Japanese patent applications

JP12450798 and JP 12450898 filed on 7 May 1998.

Thus, only the prior art available before this

date was taken into account when assessing

the patentability of the invention. Paragraph

(56) shows the references cited in the patent

document denoting what has been considered

the prior art by the patent office in the course of

a search or examination procedure.

Paragraph (73) identifies the owner of the

patent, while paragraph (72) lists the inventors.

In our example, the invention was made by

the four people whose names are given in

paragraph (72). The proprietor of the patent is

the company Ajinomoto Co., Inc. of Japan.

As stated in paragraph (54), the invention

relates to a process for producing dry instant

soups and sauces. Paragraph (51) provides one

or more international classification codes.

These classification codes are important for

searches in patent databases. The international

classification A23 states that the invention is in

the class which relates to "foods or foodstuffs;

their treatments, not covered by other classes".


Slide 54The parts of a patent document (I)


Patent documents consist of the title of

the invention, an abstract (which is a short

summary of the invention) and a description.

The description includes details of the field

or technical area of the invention and the

background to the invention. It outlines the

technical problem that the invention seeks to

solve and how others have tried to address it.

It flags the technical problem to be solved by

the invention, but does not reveal the invention

itself.

The background of the invention sets out what

existed to solve the technical problem in the

field of application before the invention came

along, along with the problems and drawbacks

associated with the "state of the art". This state

of the art is referred to as the "prior art".

This is followed by a specific or detailed

description of the invention, including how it

provides a technical solution for the technical

problem, all possible uses and applications,

and how to make or construct it. This is the

part where your patent attorney will use every

possible application of the invention to describe

in detail how it addresses the problems cited in

the background to the invention.


Slide 55 The parts of a patent document (II)


The description also contains a brief description

of the drawings, plus a detailed description of

at least one way of carrying out the invention,

which is referred to as the embodiment of the

invention.

The claims describe the scope of the invention.

There are independent claims and dependent

claims. We will see what the difference

between them is on the next slide.

Finally, patent documents also usually contain a

drawing or drawings illustrating the invention.


Slide 56 More about the claims


As we have just seen, the claims of a patent

application define the matter for which

protection is sought. They express the subject-

matter in a technical manner which will

allow people who read the patent document

to understand what is being claimed by the

patentee as his invention. Claims may relate to

a product, an apparatus or entity, or a process,

use or activity.

Independent claims are directed to the essential

features of an invention. Dependent claims

relate to further details of the features of the

independent claim.

In the example on the slide, "A" could, for

example, be a device or apparatus for mixing

concrete, or a process for stabilising an

emulsion, or a method for making something.

B, C and D are the features defining what the

invention claimed by the applicant actually is.

So we could have the following claim, for

example: A device or apparatus for mixing

concrete (A) comprising a drum (B), a handle

attached to it (C) and a wheel to spin the

drum (D).

A dependent claim then further defines the

particulars of independent claim 1, as follows:

A device (A) as claimed in claim 1, comprising a

handle made of iron (E).


Slide 57 Requirements for patentability


In order to be patentable, an invention must be

new, inventive and industrially applicable.

Industrial application is usually easy to argue.

So what are the tests for novelty and inventive

step?

The test for novelty is objective and we will

look at it in more detail on the next slide. The

test for inventive step is subjective and requires

"a person skilled in the art". The person skilled

in the art is a technical expert in the field of the

invention.

The European Patent Office uses the problem-

solution approach to determine inventiveness.

This approach comprises three main stages:

determining the closest prior art; establishing

the objective technical problem to be solved;

and considering whether or not the claimed

invention, starting from the closest prior art

and the objective technical problem, would

have been obvious to the skilled person.

However, there are exceptions. For example,

mere discoveries or mathematical equations

are not patentable in every country. In some

countries, claims for methods of treatment

and business methods are not allowed. In most

countries software is not patentable as such.


Slide 58 The test for novelty


The test for novelty is an objective test.

Are all the components of the invention known?

Are they disclosed as state of the art?

The disclosure may be a similar product that

already exists. It may be a write-up, scientific

article or documentation of any sort. It must

be before the priority date claimed by the

invention. It can be anywhere in the world, in

any form and in any language. It does not have

to exist as a product or be in use in practice. It

doesn’t matter if you are an English speaker and

the invention was only ever known to a remote

tribe in Indonesia whose language you don’t

speak.

There is an absolute novelty requirement in

Europe.

For example, let's imagine that you have an

invention relating to a retractable ballpoint pen.

You file a patent application on 2 May 1988.This

means that all documents prior to 2 May 1988

are relevant to the test for novelty.

If all the components of your claim are present

in any one document found, your invention is

not novel and is therefore not patentable.

If a claim reads as "a product A having

components B, C, D and E" then the test for

novelty asks "Are A, B, C, D and E present in a

single document and did the publication exist

prior to the date of priority claimed by the

present invention?"


Slide 59 Two examples


We will now look at two examples which were

both inventions from European universities, and

both start-up ventures that attracted a lot of

attention.


Slide 60 Sugru (I)


The original idea for sugru came from Jane

Delehanty, a master’s student in product design

at the Royal College of Art in London.

The problem she wanted to solve with her

invention arose from the fact that so many

products seem to have a limited lifetime and

the fact that physical parts seem to break all

the time. One example might be a hammer

with a plastic handle, where the plastic handle

cracks but the hammer is still perfectly usable.

She addressed the problem by developing a

silicone rubber which is hand-formable, air

cures at room temperature, is strong and

durable even in extreme weather conditions,

flexible till cured, and has a soft touch, but is

"grippy".

She called it sugru, from the Irish "sugradh",

meaning "play".


Here is an excerpt from the sugru patent:

– Easier than any existing method for non-experts– One-part: Requires no mixing by the end user - simply

apply pressure as needed and allow to cure– Requires no temperature change to form the shape– Requires no special tools to form the shape– Requires no temperature change to cure– Formable and cures at room temperature– Can easily be incorporated into products in an

industrial moulding process– Is of sufficiently high plasticity that the uncured

material does not slump or sag– Is of sufficiently high plasticity that the uncured

material is not deformed in the assembly, packaging and storage phases, prior to forming by the end-user

– Is of sufficiently high plasticity that the uncured material can be formed easily and pleasurably by hand, and a smooth surface can be maintained or achieved with handling and smoothing

– Uncured formulations may be optionally self-adhesive, so that a bond can be achieved by applying them directly to substrates

– Uncured formulations may alternatively be applied to a primed substrate to achieve a strong adhesive bond – this will provide a stronger bond which will be an advantage to products manufactured industrially with material parts of the present invention

– Cures to a resilient and tough finished product, which can be waterproof and comfortable at extreme temperatures - to 250°C.

Slide 61Sugru (II)


What makes sugru such a great product?

It is a pliable substance with quickly sets to

form the required shape. No special tools are

needed to form the shape.

It has the mouldability of a high-temperature

curing silicone but retains the adhesive

properties and room-temperature curing of

glues and sealants.

We will see what it looks like on the next slide.


Slide 62What does sugru look like?


These images are from the sugru website at

www.sugru.com. They show the packaging, part

of the manufacturing process and various ways

in which sugru has been applied by users.

In the bottom right-hand corner you can see

the cover of TIME magazine devoted to the

50 best inventions of 2010. Sugru was ranked

22nd, while the iPad came in at 34th!


Slide 63History of the sugru patent


The story of the sugru patent started with a

priority application entitled "Room temperature

curable silicone elastomer composition", which

was filed on 30 November 2006.

Almost a year later, on 29 November 2007, at

the end of the priority period, the applicants –

FormFormForm – filed an international patent

application. The PCT patent application was

published on 5 June 2008, 18 months from the

priority date, as WO2008/065406A1. This was

the first time that this patent application was

available as a public document. The suffix A1

denotes that an international search report (ISR)

was published at the same time.

The international application entered the

regional phase in Europe and the national phase

in China, the UK and the USA on 30 November

2006.

A European patent has already been granted,

and validation has started in some designated

states.


What do you think is the inventive concept of sugru?

The product can be used by non-experts without the need for industrial moulding processes. It is a one-part "play dough" that does not require any additional materials or temperature processes to cure it. So the inventive concept is the self-curing, easily mouldable silicone.

What did the applicants claim in their application?

Did they claim a product or a process?

Possible product claims– A product such as the material itself and what it is, for

instance a "self-curable silicone".– The composition of the material, for instance a self-

curable silicone of composition x, y, z.

Possible process claims– A process for making the particular product of a

particular composition (the commercially viable way of making the silicone of that specific composition).

– A process for moulding the product. They could claim the DIY process, i.e. that it is moulded by the user, and/or the process by which somebody applies a product of a particular composition to repair something, for instance.

Slide 64Exercise 1


What do you think the inventive concept of

sugru is?

What do you think the applicants claimed in

their application?


Slide 65Claims at the PCT stage


There are ten claims in total. Claim 1 is an

independent claim directed to a composition.

Claims 2 to 10 are dependent claims. Claim 9 is a

product claim – the product of the composition

of claims 1 to 6. Claim 10 is a process claim

relating to a process for producing a product

according to claims 1 to 6.

Note that the applicants have not revealed

the process for making the composition in the

patent application? Why do you think that

might be?

This could be for commercial reasons. If they

were to license the product to a third party

in order to allow them to commercialise it in

new markets such as China or Australia, they

might include the relevant know-how and

trade secrets. The know-how could include the

commercially viable production process – in

other words, how to produce the composition

on a commercial scale, efficiently and safely.

Trade secrets could include supplier and

customer lists.

The product patent ensures that anybody

who wants to make a composition of this kind

cannot do so without getting a licence for the

patent. This is also a clever commercial strategy

for keeping one step ahead of competitors.

If, however, there was a country in which

they did not patent the product and a third

party wanted to make it there, they could. But

that third party would have to sit and work

out the details, spending time and money on

figuring out how to make the composition on a

commercial scale and sell it successfully.


Slide 66 Claim 1 of the PCT application


Claim 1 relates to the composition of sugru.

The applicants tried to get as wide a claim

monopoly as possible, covering all room

temperature curable silicone elastomer

compositions with a Williams plasticity from

80 mm to 900 mm.

Is this what they claim their invention is? In the

examination phase, the examiner will ask the

following questions:

Do all such silicone compositions actually meet

the specification set out in the claim?

How does this fit with the prior art identified

by the examiner in his search on novelty and

inventive step?


Slide 67Is it novel?


The priority date of the sugru patent

application is 30 November 2006, the date the

UK application was filed. The PCT application

was published in June 2008. The international

searching authority was the EPO.

Applying the test for novelty, the examiner

must ascertain if there was any document or

publication that existed before 30 November

2006 that, when taken alone, discloses the

invention claimed in the sugru application.

The first published search report states that

claims 1 to 10 might not be novel and/or

inventive. Why is that?

The reason for this is that the examiner

has identified and analysed seven prior art

documents – the ones shown on the slide –

which call into question the novelty and/or

inventive step of the corresponding claims.

The first six documents are relevant for claims

1 to 10, and the last one for claims 1 to 4.


Slide 68What did the applicants do next?


The applicants had to decide whether they

should abandon the patent application or

request a preliminary examination and/or

proceed to enter the national or regional phase

in individual countries or in Europe.

They decided to proceed by entering the

regional phase in Europe and the national

phase in the USA and China, and continuing to

prosecute the UK filing.

They had a fixed time limit of 30/31 months -

depending on the region or country - from the

priority date to do this.

In light of the prior art revealed, they also had

to amend the claims to ensure they were novel

and inventive.


Slide 69Comparison between original PCT claim 1 and the amended EP version


The left-hand column shows the original

PCT claim. The right-hand column shows the

additions included to limit the scope and

amend claim 1 for the purpose of the European

application.

In light of the various prior art documents

the applicants had to adjust their very broad

composition claim of "any room temperature

curable silicone elastomer composition where

the uncured William’s plasticity is between

80 mm and 900 mm" to include more details

of the actual composition. The components

added in the right-hand column all limit the

scope of the invention. The claim now provides

a more narrow definition of what makes up a

silicone composition of a William’s plasticity of

between 80 and 900 mm.

The examiner is saying, "sorry, you think your

invention is any room temperature curable

silicone composition where the uncured

plasticity is between 80 and 900 mm. But I can

see that there are other people who have used

this before you. You clearly have an invention

that you want to protect, but I will not allow

such a broad claim for your invention. In light of

all the prior art I have cited, what is it you want

to claim?"

The applicants then provided details within

the field of room temperature curable silicone

elastomer compositions of a Williams plasticity

of 80 to 900 mm of the specific characteristics

that define their composition.


Slide 70Patent status of sugru as of March 2013


The applicants have been granted a European

patent. However, it will not take effect until it

has been validated in each of the designated

states, in accordance with the applicable

national laws.

In China and the USA the examination

procedure is still ongoing.


Slide 71Example 2: Hövding airbag cycle helmet


In our second example, Swedish inventors Anna

Haupt and Terese Alstin, originally from Lund

University, sought to address the problem that,

despite the need for safety, people don’t like to

wear cycle helmets, as they ruin their hair-do

and just don’t look "cool".

Haupt and Alstin invented the helmet while

working on their joint master's project in

industrial design. According to Swedish law at

the time, children under the age of 15 had to

wear helmets when riding their bikes, and a

proposal had been made to extend this to all

cyclists. On their website, the inventors admit

that they "would not have been seen dead in

a polystrene helmet", and that that’s what

prompted them to start designing an "invisible"

helmet.

They solved the problem by inventing an airbag

helmet which they named Hövding.

The helmet comprises a collar containing

an airbag, with helium as the inflating

agent and sensors including gyroscopes and

accelerometers.


Slide 72What does the airbag helmet look like?


On the left you can see a woman wearing

the Hövding airbag helmet before and after a

collision. The illustration on the right is from the

patent application.

You can watch a YouTube video of how the

helmet works in a collision at

www.youtube.com/watch?v=WCd8qQv6Htw&f

eature=plcp.


Slide 73 Exercise 2


What do you think the inventive concept is

in this case?

What do you think the applicants claimed?

How would you have structured a suitable

claim?


Slide 74 What did Hövding claim in their PCT application?


The applicants claimed a system in the form

of product claims 1 to 9. They also claimed a

method of protecting the head of the user in

case of a collision in the form of method claims

10 to 12.

To get a better understanding of the claim

structures, we will focus on the independent

product claim and the amendments that were

made to it during the examination procedure.


Slide 75 Claim 1 of Hövding's PCT application


Claim 1 is an independent claim relating to a

system for protecting a portion of the body of

a user.

The individual components are shown here on

the slide.

Note that the claim does not include the words

bicycle or helmet or bicycle helmet or inflatable

helmet. Why not? It does not refer to helium as

an inflating agent either. Nor does it mention

sensors such as gyroscopes or accelerometers.

Why has the patent attorney said "a first part

suitable for surrounding a neck portion and

back head portion of a user"? Why did he not

just say "a collar" or "a neck brace"?

This is because the aim is to stay as general as

possible in order not to limit the claims by using

specific defined expressions.


Slide 76 Is it novel?


The priority date of the Hövding application

is 26 October 2005. The PCT application was

published 18 months from the priority date. The

application was virtually a secret or undisclosed

document from 26 October 2005 until its

publication.

Applying the test for novelty, the examiner

must ascertain if there was any document or

publication that existed before 26 October 2005

that, when taken alone, disclosed the invention

claimed in the application.

The international search report stated that the

system as described in claims 1 to 9 might not

be novel and/or inventive. The examiner cited

the three prior art documents shown here.


Slide 77 What did the applicants do next?


The applicants had to decide whether they

should abandon the application or request a

preliminary examination, and then whether

to enter the national/regional phase in various

countries.

Of the three options open to them, the

applicants decided to request an optional

preliminary examination. An IPER or

international preliminary examination report

on patentability was issued. In light of the prior

art revealed in the report, the applicants had

to amend the claims to ensure they were novel

and inventive.

Applicants may request the international

preliminary examination of an international

application under Chapter II of the PCT to

obtain "a preliminary and non-binding opinion

on the questions whether the claimed invention

appears to be novel, to involve an inventive

step (to be non-obvious), and to be industrially

applicable". The examination is carried out

by an International Preliminary Examining

Authority, for use before the "elected" offices,

that is, the designated offices which are elected

by the applicant for that purpose.


Slide 78 Comparison between original PCT claim 1 and the amended claim


The left-hand column shows the original claim

1 filed at the PCT stage.

Taking account of the prior art documents

cited by the examiner, the applicants amended

the claim. They submitted an amended claim

before the preliminary examination was carried

out. The examiner issued his evaluation in an

IPER, or international preliminary examination

report.

The applicants added an additional component,

G, which reads "said first part being adapted for

inflation prior to inflation of the second part".

In doing so, they overcame the objection of

lack of novelty and inventive step in light of the

prior art cited by the examiner.


Slide 79 What did the examination report say and what happened next?


The examination report said that in light of the

prior art documents cited, claims 1 to 12 were

new and inventive.

So the applicants proceeded with the

prosecution of the application by entering the

national/regional phase. The countries they

opted to file in at the same time as filing the

PCT application were Australia and Canada.

In Australia, a patent has already been granted

on the basis of the claims as amended during

the PCT examination phase.

The regions and countries in which they entered

the national/regional phase after filing the PCT

application were China, Europe, Japan, Russia,

Sweden and the United States.

Having entered the national/regional

phase in various countries on 26 April 2008,

30 months from the priority date, the

applicants have already been granted a

patent in China. A European patent was

granted in November 2012 and a US patent in

March 2013.


4 Utility models

178 EPO/OHIM Intellectual Property Teaching Kit – IP Advanced Part I Utility models


Utility modelsList of slides

Slide 80 Utility modelsSlide 81 Scope of protections of utility models

compared with patentsSlide 82 Example of a utility model (I)Slide 83 Example of a utility model (II)Slide 84 Different names for utility models

and patentsSlide 85 European countries in which utility

model protection is availableSlide 86 Utility model applications filed in

Europe (2002-2012)Slide 87 Scope of protection and exclusions (I)Slide 88 Scope of protection and exclusions (II)Slide 89 How to get utility model protectionSlide 90 Important requirements for utility

model applicationsSlide 91 State of the art for European patent

applicationsSlide 92 State of the art for utility modelsSlide 93 State of the art for utility models:

what happens in practiceSlide 94 Prior art searchesSlide 95 Inventive step Slide 96 Developing an IP strategy Slide 97 Comparison of costs – patent and

utility model applicationsSlide 98 Utility models: for and againstSlide 99 Total filing figures for various IP rights

2008-2010Slide 100 Relative filings in 2010 by continentSlide 101 Top 10 offices in 2010 for utility model

applicationsSlide 102 30 years of filing history for utility

model applicationsSlide 103 Recommendations and further readingSlide 104 Quiz

Utility models


Slide 80Utility models

WIPO (the World Intellectual Property Organization) defines the utility model (UM) system as follows:

"Like a patent, a UM confers a set of rights for an invention for a limited period of time, during which UM holders can commercially exploit their inventions on an exclusive basis. The terms and conditions for granting UMs are different from those for "traditional" patents. For example, UMs are issued for a shorter duration (7 to 10 years) and, at most offices, applications are granted without substantive examination. Like patents, the procedures for granting UM rights are governed by the rules and regulations of national intellectual property (IP) offices, and rights are limited to the jurisdiction of the issuing authority."

EPO/OHIM Intellectual Property Teaching Kit – IP Advanced Part I 181Utility models

This presentation is all about utility models.


Slide 81Scope of protections of utility models compared with patents

Utility models have many aspects in common with patents. In contrast to other intellectual property rights (such as designs, trade marks, copyright, etc.), utility models and patents may protect the same aspects of a technical invention (e.g. the technical details of a flight simulator comprising a robotic arm). Designs and trade marks can protect other aspects, but not the technical details.

A utility model is an exclusive territorial right which prohibits third parties from – making– selling– marketing– importing or – using

the protected subject-matter in the country in which it was registered.

However, while patents offer protection for methods and processes, this is not normally the case for utility models and depends very much on the national utility model law. This is a key aspect when talking about utility models, since there is no one single "European" utility model law, but instead many different national laws. In some countries, such as the UK, it is not possible to file utility models.

Students should be made aware that utility models are unexamined IP rights. That means that they are granted without substantive examination for novelty and inventive step. This is the reason why they can be registered within a matter of a few months of having been filed.

It is important to point out that aspects of utility model law can differ from country to country. This is also true for national patent laws. Strictly speaking, almost every bullet point on this slide should begin with the words 'In the majority of countries', as there are numerous exceptions. For example, French patent law does not stipulate the same examination procedure as German patent law with respect to inventive step. However, rather than detailing the exceptions, we have listed the major differences between utility model law and patent law that exist in most countries.

These aspects will be returned to in the slides that follow.

Utility models are registered intellectual property (IP) rights. Any interested party can consult the register to find the full details of registered utility models.

They are territorial rights that are valid in one country only, namely the country of the issuing authority. For example, a German utility model is only valid in Germany and does not offer protection in France or any other country.

Utility model applications must be filed individually with the individual national offices. There is no equivalent of the PCT or EP/EU route for utility models, although there are possibilities for filing utility model applications based on international or national patent applications, or vice versa

Utility models provide protection for technical inventions, but not normally for processes. Technical processes may be protected by patents. There may be other exceptions. For example, Germany will not register utility models for biotechnology inventions.

Utility models offer protection for a maximum of three to ten years. This limitation, in combination with the quick registration process, makes utility models attractive for inventions with shorter life-cycles.

Utility models do not normally involve a search report (exceptions include Austria, for example). In some countries (e.g. Germany), search reports are available on demand.

Utility models are not examined IP rights with respect to novelty, inventive step and industrial applicability. In other words, they are not examined for these aspects on registration. One exception to this is Brazil (similar examination as for patent applications).

In most countries, the validity of a utility model with respect to novelty and inventive step is only reviewed if it is challenged, i.e. in invalidation or infringement proceedings. Patents are granted following an examination procedure. A published (and granted) patent therefore offers more legal certainty than a registered and published utility model.

The procedural fees for utility models may be lower than those for national patent applications. However, the fact that utility models are available more quickly than patents appears to be more important than potential cost savings.


This slide compares some key aspects of utility

models with those of patent applications and

granted patents.

Both patents and utility models are registered

territorial rights offering protection for

technical inventions. In contrast to patents,

however, utility models are only available in

certain countries. Also, utility models must

be filed individually in each country, whereas

patent applications may be filed centrally

with the EPO or WIPO. Utility models offer

protection for up to 10 years, while patents

offer protection for 20 years

Utility models are normally registered without

a search report on the prior art, whereas such

reports are standard for patent applications.

Generally speaking, utility models are registered

and published within a few months, while

patent applications are normally published

after 18 months. The publication of the patent

application is a procedural step which takes

place before the application is examined.

The result of the patent examination procedure

is either the grant of a patent or the refusal of

the application.

In general, utility models are registered without

a substantive examination as to novelty,

inventive step and industrial applicability.

The novelty, inventive step and industrial

applicability of utility models is only reviewed

in revocation or infringement proceedings.


Slide 82Example of a utility model (I)

This example of a German utility model can be found in the register of the German Patent and Trademark Office (DPMA) athttp://register.dpma.de/DPMAregister/pat/register?AKZ=2020120065513&CURSOR=49

At first glance, it is not easy to distinguish it from a national patent application. It is the letter 'U' that indicates that this document is a registered utility model.

All utility models comprise the following components:

– an abstract– a description– claims– (normally) figures.

The utility model in our example protects a driving simulator that allows a normal car to be used to simulate driving. The simulator comprises a base plate and several actuators for moving the base plate. The wheels shown in the figure belong to a normal car. All other components of this car are not shown. The idea is to connect the base plate to the car via adapters. By using different adapters for different cars, the same base plate and actuators can be used for simulating the driving of a range of different cars.

Since this utility model is only a few pages long, it could be that it is intended to protect one aspect of a more complex invention for which a patent application might have been filed.


This slide shows an example of a German

utility model, or "Gebrauchsmuster".

It looks very similar to a German patent

application.

It can be identified as a utility model because

the publication number at (10) contains the

letter "U".

Unlike patent applications, the publication date

of the utility model – in this case 27 September

2012 – is very close to the application date,

6 July 2012. This is due to the fact that

utility models are registered if the formal

requirements are fulfilled. No search report or

subsequent examination phase is required.

Utility model applications comprise an abstract,

a description, claims and, normally, one or more

figures.


Slide 83Example of a utility model (II)

According to the German Ordinance Implementing the Utility Model Act (Utility Model Ordinance) at www.dpma.de, the description must:

– specify the technical field to which the invention relates

– indicate the prior art known to the applicant which may be considered for the understanding of the invention

– disclose the technical problem underlying the invention

– indicate the invention for which protection is sought in the claims

– indicate the way in which the invention is capable of exploitation in industry

– state any advantageous effects of the invention with reference to the prior art indicated in the application

– describe in detail at least one way of carrying out the invention claimed, using, where appropriate, examples and the drawings.

The claims define the matter for which protection is sought in terms of the technical features of the invention.

The extent of the protection conferred is determined by the terms of the claims.

The essential features of the invention must be indicated in the first claim (principal claim).

Drawings may be added. For the representation of the invention, perspective views and exploded views may be used in addition to views and sectional views.

Further requirements for the example of German utility models can be found in the Utility Model Ordinance at www.dpma.de.


All applications must contain a request for the

grant of a utility model, a description of the

invention, one or more claims, any drawings

referred to in the description or claims, and an

abstract.

The purpose of the abstract is to give brief

technical information about the disclosure

as contained in the description, claims and

drawings.

The claims in our example relate to a simulator

device.

It is not possible to get utility model protection

for the process of simulation in Germany,

although it could be the subject of a German

patent application.


Slide 84Different names for utility models and patents

This slide shows the different names for utility models around the world. It is important to be aware of these differences in order to avoid confusion and misunderstanding.

The terms or expressions for utility models are shown in blue, while the equivalents for European patents are shown in dark grey.

In the USA regular patents are called "utility patents" and should not be confused with utility model protection (see also www.uspto.gov/patents/process/index.jsp).

The Chinese expressions ("invention patent" and "utility model patent") are less confusing.

For more information about the situation in Australia, go to www.ipaustralia.gov.au/get-the-right-ip/patents/types-of-patents/innovation-patent/.


This slide shows the different names for utility

models around the world. In Australia they

are referred to as innovation patents, while

in China they are utility model patents. In

Indonesia, they are known as simple patents.

Ireland has short-term patents, which have a lot

in common with utility models in other states.

The United States Patent and Trademark Office

differentiates between design patents, plant

patents and utility patents. It does not offer

utility model protection. The term "utility

patent" is used for a regular patent application.

In Australia, innovation patents last for

eight years. They are designed to protect

inventions that do not meet the inventive

threshold required for standard patents.

They are a relatively quick and inexpensive

way to obtain protection for new devices,

substances, methods or processes.

In the People’s Republic of China, utility

models are known as "utility model patents"

and patents as "invention patents".


Slide 85European countries in which utility model protection is available

Utility models (or short-term patents) are only available in half of the 38 member states of the European Patent Organisation (see www.epo.org/about-us/organisation/member-states.html).

Ireland and Slovenia have short-term patents rather than utility models. The Netherlands used to offer utility models (or short-term patents) prior to the amendment of the Netherlands Patent Act in 2008.

According to the Slovenian Intellectual Property Office, the short-term patents available in Slovenia basically correspond to utility models like those available, for example, in Germany (see www.uil-sipo.si/sipo/activities/patents/frequently-asked-questions/).

Worldwide, the availability of utility models is difficult to assess because of the differences in laws and names. WIPO, for example, only publishes figures relating to its own member states (see www.wipo.int/sme/en/ip_business/utility_models/where.htm).

According to a study conducted in 2004 by a Japanese researcher, about 130 countries have introduced the utility model system to supplement national patent law (see IIP bulletin 2004, 39).


This slide shows the European countries in

which utility model protection is available.

In contrast to patents, utility models – known

as short-term patents in Ireland and Slovenia

– are only available in half of the 38 member

states of the European Patent Organisation

(EPO).


Slide 86Utility model applications filed in Europe (2002-2012)

The filing figures for utility model applications in Europe are fairly stable. More than 50% of applications are filed in Germany, a country that has a long tradition of utility models. As we will see later, only 10% of all filings worldwide occur in Europe.

These and many other statistics are available from the WIPO website at www.wipo.int/ipstats/en/. As you can see, the database does not have a full set of data for each country/year.

2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012Albania - - - - - - - 1 1 - -Austria 983 1 050 1 067 989 1 019 871 861 926 882 812 711Bulgaria 127 127 96 88 96 - 143 178 178 224 210Czech Republic 1 121 1 117 1 213 1 185 1 082 1 125 1 183 1 382 1 608 1 646 1 863Denmark 404 357 339 306 335 305 241 207 235 190 187Estonia 72 67 85 87 75 124 140 132 166 88 74Finland 512 496 496 439 520 506 422 475 557 481 474France - 369 303 390 381 330 288 413 484 506 428Germany 23 428 23 408 20 286 20 418 19 766 18 083 17 067 17 306 17 005 16 024 15 497Greece 204 68 38 - 581 31 33 29 30 - 17Hungary 351 316 296 268 285 251 224 254 275 270 261Italy 2 807 2 727 2 411 2 148 2 857 2 559 2 200 2 307 2 462 2 470 2 758Poland - 759 680 644 678 649 719 780 945 1 003 997Portugal 80 73 74 82 101 86 109 127 127 126 90Slovakia - 338 348 377 343 321 326 331 387 426 392Slovenia - 25 15 25 18 - 20 15 12 - -Spain 3 103 3 000 2 904 2 855 2 824 2 666 2 682 2 560 2 640 2 598 2 539Turkey - 1 212 - - - 3 011 2 992 2 882 3 033 3 280 3 788


The filing statistics for the ten years from

2002 to 2012 show that utility models are used

extensively in Germany, Turkey, Spain, Italy and

the Czech Republic.

The total number of filings has remained

relatively stable. As we will see later, more

than 80% of the total number of applications

worldwide are filed in the People’s Republic

of China.


Slide 87Scope of protection and exclusions (I)

Like patents, utility models offer protection for technical inventions. The exclusions from protection in utility model laws are very similar to those of the corresponding national patent laws.

Individual aspects of utility model law may vary from country to country, since there is no single, harmonised European utility model law. That means that when filing the same application in several countries, applicants need to be aware of each national law in order to avoid their application being rejected.


In most countries, utility models offer

protection for technical inventions, including

apparatus and devices, chemical substances

and medicinal products.

Utility model protection is not available,

however, for discoveries, scientific theories,

mathematical methods, blueprints, patterns,

teaching methods and rules for playing

games, accounting systems and programs for

computers, process inventions, for example

manufacturing and working processes,

biotechnological inventions or animal and plant

varieties.


Slide 88Scope of protection and exclusions (II)

One example of the differences in national utility model laws can be found in Austria, where 'program logic on which programs for data processing systems are based' is regarded as an invention under the Utility Model Law and can thus be protected, whereas 'computer programs as such' are excluded from protection (see www.patentamt.at/Media/PA144.pdf ).

As we have already seen, processes normally cannot be protected by utility models. Australia provides an exception to this rule.

In Australia, innovation patents last for eight years. They are designed to protect inventions that do not meet the inventive threshold required for standard patents. It is a relatively quick and inexpensive way to obtain protection for new devices, substances, methods or processes.

To read more about Australian IP law, go towww.ipaustralia.gov.au/get-the-right-ip/patents/types-of-patents/innovation-patent/.


Utility models cannot be granted for inventions

the publication or exploitation of which would

be contrary to public policy or morality.

The following example shows not only that

differences in utility model laws exist between

different countries, but also that different

interpretations can exist within one utility

model law.

For example, under Austrian Utility Model Law,

program logic on which programs for data

processing systems are based is regarded as an

invention, whereas computer programs as such

are excluded from protection.

In most countries utility models cannot protect

technical processes. Australia is one exception

to this.


Slide 89How to get utility model protection

With patent applications we have seen that the applicant has several options for filing a single application, including the World Intellectual Property Organization (WIPO) and the European Patent Office (EPO), which may then result in a plurality of national patents.

Utility models have to be filed separately in each country. Some countries also allow a utility model application based on an international patent application.

Applicants may file further applications within 12 months of the first filing.

The Paris Convention provides for the right of priority in the case of patents (and utility models, where they exist), marks and industrial designs. This right means that, on the basis of a regular first application filed in one of the contracting states, the applicant may, within a certain period of time (12 months for patents and utility models; 6 months for industrial designs and marks), apply for protection in any of the other contracting states. These later applications will then be regarded as if they had been filed on the same day as the first application. One of the great practical advantages of this provision is that, when applicants desire protection in several countries, they are not required to file all their applications at the same time, but instead have 12 months (in the case of utility models) at their disposal to decide in which countries they wish to seek protection and to organise the filing procedure (see also www.wipo.int/treaties/en/ip/paris/summary _paris.html).

In 1995 a proposal for a European Parliament and Council Directive relating to the legal arrangements for the protection of inventions by utility models was made (see also http://ec.europa.eu/internal_market/indprop/docs/model/util_en.pdf ). The Commission decided to withdraw this proposal in 2005, due to objections from several member states. The Commission considered that it was unlikely to advance further in the legislative process.


Applicants wishing to file an application for

a utility model in several countries, whether

in Europe or elsewhere, have to file individual

applications for each country concerned.

They can file further applications within

12 months of the first filing.

Patents, trade marks and designs can be filed

centrally, but this option does not exist for

utility models.

In 1995 a proposal was submitted for a

European Parliament and Council Directive

relating to the legal arrangements for the

protection of inventions by utility models.

However, the Commission decided to withdraw

this proposal in 2005, on the grounds that

it was unlikely to advance further in the

legislative process.


Slide 90Important requirements for utility model applications

In Europe, the requirements of national utility model laws are often similar to those for patents under the European Patent Convention (EPC).

The Austrian Utility Model Law, for example, states that "On request, utility models shall be granted for inventions in all fields of technology, provided they are new, based on an inventive step and susceptible of industrial application."

Austrian law also states the following:

"The utility model shall entitle the utility model owner to exclude others from industrially producing the subject matter of the invention, putting it on the market, offering it for sale or using it or importing or possessing it for the said purposes. In case of a process it shall be effective to the products directly obtained by such process."

"The utility model protection shall begin on the day of the official publication of the utility model and end no later than ten years following the end of the month in which the utility model application was filed."

"However, no examination for novelty, inventive step, industrial application as well as whether the applicant is entitled to utility model protection shall be made during the application proceeding."

The differentiation between substantive requirements and further requirements is based on European patent law. If all requirements of the patent law are fulfilled, then a patent may be granted for a technical invention.

Novelty, inventive step and industrial applicability are often mentioned as substantive requirements of patentability. However, there are further requirements that an application has to comply with before a patent can be granted. These include sufficiency of disclosure and clarity. The examination as to whether all these requirements are met can be a lengthy procedure.

In the case of utility model applications, the requirements are generally not examined, so the procedure up to registration of a utility model normally takes just a few months.

It is important for students to understand this major difference. Patents are examined registered IP rights and utility models are generally unexamined registered IP rights.


In Europe, the requirements of national utility

model laws are often similar to those for

patents under the European Patent Convention

(EPC).

However, novelty, inventive step and industrial

applicability are not normally examined when

a utility model application is registered and

published.

This means that an application can be directed

at an invention that is neither novel nor

inventive and still be granted a utility model

that becomes effective on the day of its official

publication.

As a result, the validity of a utility model in

terms of novelty, inventive step and industrial

applicability is not known on the date of its

registration and publication.

The further requirements listed on the slide

are usually examined during the registration

procedure. These requirements include the

fact that the specification must disclose the

utility model in a manner sufficiently clear and

complete for it to be carried out by a person

skilled in the art.

The claim or claims must be clear and concise

and be supported by the description, and they

must exactly define the matter for which

protection is sought. Amendments to a utility

model application that would extend beyond

the scope of the application as originally filed

are not allowed.


Slide 91State of the art for European patent applications

This slide reminds students how the state of the art is defined for patent applications. The following slide, covering the definitions used for utility models, allows a direct comparison to be made.

The state of the art (or prior art) is defined as being everything made available to the public by means of written or oral description, by use, or in any other way, before the date of filing.

Students might like to consider what the consequences might be if 'prior art' were to be defined differently in different countries.


This slide explains what is meant by the state

of the art for European patent applications.

The state of the art is defined as being

everything made available to the public

anywhere by means of written or oral

description, by use, or in any other way,

before the date of filing.

Most countries offering utility model protection

apply this definition in order to determine

whether an invention is new.


Slide 92State of the art for utility models

There are differences in the definition of the state of the art for utility models from country to country. These exceptions open up new possibilities for applicants wishing to register utility models.

If they want to file an application in several countries, applicants need to be aware of the national variations.

This slide explains the exceptions in Austria and Germany (see also www.dpma.de/english/utility _models/utility _model_protection/index.html).

In Germany, the following is not considered to belong to the state of the art for utility models:

– prior use outside Germany– public oral disclosure– applicant's own use or publication in the previous six

months.

At this point, you might like to ask students to come up with possible scenarios in which the absolute novelty criterion for patents would lead to a different state of the art than the less strict relative criterion of novelty for utility models. An example is shown on the next slide.


Utility model law in European countries is not

harmonised with respect to the definition of

prior art.

In Germany and Austria, for example, the state

of the art comprises all technical products or

processes published before the date of filing

of the utility model application. This includes

the applicant's own scientific publications or

presentations of a new product at a fair. If you

apply for utility model registration within six

months from the publication of your invention,

utility model protection is still available. This is

called the novelty grace period.

In Germany, the state of the art does not

include prior use outside Germany or public oral

disclosure.


Slide 93State of the art for utility models: what happens in practice

The example shown on this slide is intended to illustrate the problems that may be caused by exceptions or other provisions in national utility model laws.

The state of the art in Spain is deemed to comprise anything that, prior to the date of filing the application, has been disclosed in Spain, by written or oral description, by use, or in any other way.

It also comprises the contents of Spanish patent applications and utility model applications, European patent applications designating Spain in respect of which the designation fee for Spain has been paid in due time, and international (PCT) patent and utility model applications designating Spain for which the ‘national phase’ in Spain has been properly entered into.

The Bulgarian manufacturer of the hammock might be of the opinion that prior use in his country is sufficient to prevent others from filing a utility model application in another country. However, only a written publication available in Spain would really allow him to invalidate a Spanish national utility model. Prior use in Bulgaria would not be sufficient.


There are differences in the way the state of

the art is defined in different countries.

This slide shows a fictitious example of a

hammock which is produced and used in

Bulgaria.

Unless the Bulgarian manufacturer described

the hammock in a printed document in Spain,

Spanish tourists, for example, could apply for

and still get utility model protection for it in

their home country.

Spanish utility model laws do not regard prior

use in Bulgaria – that is, outside Spain – as

belonging to the state of the art.

If the Bulgarian manufacturer had published

a document about the hammock in Germany,

it could be used against a utility model in

Germany.

That document could not, however, be used

against the utility model in Spain, since only

publications in Spain are relevant.

In practice, though, the widespread availability

of documents through the internet means

that many documents that were previously

considered to be "national" have become

available worldwide.


Slide 94Prior art searches

The key message of this slide is that, in contrast to patent applications, the registration and publication of a utility model does not normally involve a search. That means that the public and/or the applicants are not necessarily aware of the prior art that is relevant for a registered utility model, unless they carry out their own search.

As soon as a utility model is challenged, however, a search report is required in order to examine novelty and inventive step.

In Germany, applicants or anybody else may choose to request a search report at any time.

An example relating to the application looked at earlier in the module can be found at: https://register.dpma.de/DPMAregister/pat/register?AKZ=2020120065513&CURSOR=49

The Austrian Utility Model Law stipulates the following:

"If there are no objections against the publication and the registration of the utility model, the Patent Office will provide the search report, which will indicate the documents determined by the Patent Office at the time the search report is provided that can be taken into account to assess novelty and inventive step."

It goes on to stipulate that the search report must be based on the claims.


Before filing a utility model application,

applicants should be aware of the relevant prior

art. They can find out about this by searching

public databases such as Espacenet and

DepatisNET.

Prior art searches are not normally offered by

national patent offices. Austria is an exception

to this, and in Germany, applicants are free to

choose whether they want the German Patent

and Trademark Office to produce a search

report or not. In fact, in Germany, anybody can

request a search.

After registration, a search for prior art

documents might be necessary as part of

revocation proceedings, where another

party seeks to invalidate a utility model, or

infringement proceedings, where a court

examines the validity of a utility model within

the context of an alleged infringement.


Slide 95Inventive step

Potential differences between the notion of inventive step for patents and inventive step (or inventiveness) for utility models add even more complexity.

The question of inventive step is, however, not immediately relevant for utility models since utility models are not normally examined for inventive step at the time of registration and publication. The inventive step may be examined, however, if a utility model is the subject of:

– revocation proceedings (when another party seeks to invalidate a utility model)

– infringement proceedings (when a court examines the validity of a utility model within the context of an alleged infringement).

Different practices with respect to inventive step can potentially lead to different outcomes in different national litigation proceedings.

Here are some examples of differences between patent law and utility model law.

IrelandIn Ireland, the specification of a short-term patent (utility model) application may not include more than five claims. The requirements of novelty and industrial applicability apply, but instead of non-obviousness, it is sufficient for the invention to be "not clearly lacking an inventive step". Neither a search report nor evidence of novelty in the form of a foreign patent specification is required in order for registration of a short-term patent.

AustraliaIn Australia, innovation patents last for eight years. They are designed to protect inventions that do not meet the inventive threshold required for standard patents. It is a relatively quick and inexpensive way to obtain protection for a new device, substance, method or process (see also: www.ipaustralia.gov.au/get-the-right-ip/patents/types-of-patents/innovation-patent/).

In some countries, the differences between the inventive step requirements for patents and utility models have been discussed by the most important courts in the country, e.g. in the Demonstrationsschrank ("demonstration cupboard") decision of the Federal Supreme Court (File No. X ZB 27/05) of 20 June 2006 in Germany, which brought the requirements for inventive step for patents and utility models more closely into line in that country.


In some countries, including Ireland and

Australia, for example, there is a difference

between the requirements for inventive step

for utility models and those for patents.

Some sources highlight the difference by

referring to "inventive step" for patent

applications and "inventiveness" or "innovative

step" for utility models, although the two

expressions can often be used interchangeably.

The potential difference for the inventive

step requirement is, however, only one

argument in favour of utility models.

Applicants may want to seek protection of

the same invention by both a patent – for up

to 20 years – and a utility model, for fast

availability of initial protection.

The conditions governing the coexistence

of patents and utility models for the same

invention depends on national law.


Slide 96Developing an IP strategy

This slide looks at the various strategic possibilities that utility models offer to applicants.

Depending on the national law concerned, applications can be filed at various stages. Applicants can choose to register a utility model as strategic IP tool, together with applications for patents and other IP rights.

In some countries it is possible to file a national utility model from a pending European patent application. In Germany and Austria, for example, applicants who become aware of a potential infringement may, subject to obtaining a translation of the patent application into German, obtain a utility model in a matter of weeks based on a pending European patent application.

The German Utility Model Law provides for a split-off utility model from an existing patent application (see also the German Patent and Trademark Office's brochure on utility models, www.dpma.de/english/utility _models).

Before the expiry of 10 years from the filing date, a utility model may be split off from a patent application for the same invention. The utility model application must be filed (together with the splitting-off declaration) within two months after the conclusion of the examination of the patent application (see also www.dpma.de/english/service/glossary/s_z/index.html).

In China, utility models cannot be converted into invention patents. However, dual filing of applications for invention patents and utility models is possible in order to obtain early protection. Upon notification of the grant of the patent, the utility model must be abandoned (see www.epo.org/searching/asian/china/faq.html#faq-493).

In China, only one patent can be granted for the same invention. However, where the same applicant applies for a utility model patent and an invention patent for the same invention on the same day, if the utility model patent acquired earlier has not yet been terminated and the applicant waives his rights, the invention patent will be granted (see Patent Law of the People's Republic of China, Article 9 and http://english.sipo.gov.cn/laws/lawsregulations/201101/t20110119_566244.html).


Depending on the national law concerned,

applications for utility models can filed at

various stages.

A utility model based on a patent application

may be filed on the same day, or later.

In some countries it is possible to split off a

national utility model from a pending European

patent application, or to convert the utility

model application into a patent application.

Applicants can also choose to file an application

for a utility model without a patent application

for the same or a similar invention.

Together with other IP rights such as designs

and trade marks, this gives applicants and

inventors a wide range of strategic flexibility.


Slide 97Comparison of costs – patent and utility model applications

The lower costs for utility models are often mentioned as an advantage for small and medium-sized enterprises. However, when analysed over a period of several years, the total costs might not be substantially different from those for national patents and patent applications.

In this slide, it has been assumed that:

– the attorney fees are similar for both types of applications

– a patent is granted after around 4-5 years – the time axis is not linear

The fee structure for the two procedures differs in that:

– for patents/patent applications the applicant/proprietor pays annual renewal fees

– for utility models the applicant/proprietor pays fees for several years in advance.

The main advantage of utility models is their early registration (three months after filing) compared with several years for patents.

Reminder: Utility models are registered, but unexamined. Their validity with respect to novelty and inventive step is therefore unknown.

From a cost perspective, the differences between utility models and patents appear to be less relevant.

A major difference lies in the frequency and number of payments. Once a patent has been granted, renewal fees have to be paid annually. With utility models, the applicant has to pay in advance to cover several years.

As the total costs might not be all that different after several years, it is the strategic value for the inventor that is more relevant. Granted patents are based on a thorough examination process, while utility models offer fast, but unexamined protection.


This slide compares fees for a utility model

application with those for a realistic example of

a national patent application.

The total fees might not be all that different

when we look at a period of several years. It is

the strategic value for the inventor that is more

relevant.


Slide 98Utility models: for and against

The strategic potential of utility models is unique within the category of registered IP rights.

On the one hand a utility model offers protection for technical inventions, like a patent. On the other hand it is an unexamined registered IP right, like registered trade marks and designs.

You could ask your students to discuss the advantages of these two aspects.

Patents offer protection for technical inventions but the search and examination phases preceding the grant of a patent or the refusal of an application may last several years.For some inventions this time period might be too long, and that's where utility models might be particularly useful. An inventor can file a patent application and in parallel get protection for his invention after a few months via a registered utility model (where available).

Remind the students that the central filing of one application for several countries is not possible.


Utility model applications can be filed when

needed at different times in different countries

depending on national utility model law and

the strategic preferences of the inventor.

Although procedural fees may be lower than

for national patent applications, applicants are

advised to consult a professional for drafting

utility model applications.

The requirements for utility model applications

are similar to those of patent applications

and the procedure of filing and prosecuting

applications requires professional experience.

It is very important to remember that utility

models are registered but unexamined IP rights.

Registration takes place within a few months.

The inventor may thus have an IP right at hand

when going to market with a new product.

The examination for novelty and inventive step

is postponed as long as the utility model is not

challenged in litigation. This causes more legal

uncertainty than with granted patents.

Utility model revocation proceedings may be

expensive if the losing party has to bear the

costs, including those incurred by the opponent.


Slide 99Total filing figures for various IP rights 2008-2010

The figures on this slide were obtained from the WIPO IP Facts and Figures 2012 report.

Utility models Trade marks Patents Industrial designs2008 313 000 5 473 000 1 915 000 557 0002009 399 000 5 185 000 1 846 000 587 0002010 496 000 5 588 000 1 979 000 669 000

They reveal that:

– utility models are used less than the other three registered IP rights

– utility models have the strongest growth (especially in China – see next slides)

– trade marks are by far the most frequently used IP right.


The filing figures for utility models, patents,

trade marks and industrial designs in the period

2008 to 2010 reveal that, although they are

used less than the other three IP rights, utility

models have recorded the highest growth rate.

These figures were obtained from WIPO's

IP Facts and Figures 2012 report.


Slide 100Relative filings in 2010 by continent

The figures on this slide were published in the WIPO IP Facts and Figure 2012 report.

Utility models Trade marks Patents Industrial designsOceania 2.5 1.6 1.1North America 9.0 26.6 5.1Latin America 0.7 9.5 2.6 1.9Europe 10.5 35.6 17.4 9.1Asia 88.5 41.1 51.3 81.8Africa 0.02 2.3 0.6 0.7

Utility models statistically play a role in just two continents: Asia and Europe.

The percentage for Africa is 0.02 %, only just above zero.

Utility models are not known in North America, which is why there is no entry in this column.


The 2010 figures for IP rights filings by continent

– also from WIPO's IP Facts and Figures 2012

report – reveal that utility models are primarily

used in Asia.

The chart on this slide compares percentages

of total filings, not absolute figures. The bars in

each colour add up to 100%.

When we look at utility models, indicated by

the grey bars, we can see that just over 88% are

filed in Asia and around 10% in Europe, leaving

less than 1% in the rest of the world.

Utility models are unknown in North America.


Slide 101Top 10 offices in 2012 for utility model applications

The figures on this slide were sourced from the WIPO Statistics Database in June 2014.

This table shows the top offices with respect to total filing numbers for utility models in 2012.

Interestingly, Brazil is listed as number 8 worldwide, while Latin America as a continent is statistically speaking virtually irrelevant in the worldwide comparison of total utility model filing numbers (see previous slide).

China is top of the list in terms of the total number of filings.

2012China 740290Germany 15497Russian Federation 14069Republic of Korea 12424Ukraine 10217Japan 8112Turkey 3788Brazil 2997Italy 2758Spain 2539Czech Republic 1863


This chart shows that, in 2012, almost 90% of all

utility model filings worldwide occurred in the

People’s Republic of China, which has seen an

enormous increase over recent years.

This information was sourced from the WIPO

Statistics Database in June 2014.


1982 1983 1984 1985 1986 1987 1988 1989 1990 1991 China - - - 5 174 9 673 16 706 22 400 20 727 27 615 33 282 Europe 49 357 50 214 50 689 52 893 51 957 28 272 25 332 26 060 24 716 25 906 Japan 202 702 205 215 202 164 204 803 204 199 201 609 171 656 153 277 138 272 114 674 Republic of Korea 10 669 11 485 14 765 18 548 22 401 24 773 22 677 21 530 22 654 25 895 Russian Federation - - - - - - - - - -Ukraine - - - - - - - - - -

Slide 10230 years of filing history for utility model applications

The figures on this slide were obtained from the WIPO Statistics Database.

Illustrating 30 years of filing history, the graph very clearly shows that the countries with the highest filing numbers are located in Asia and Europe.

At first glance, the presence of continents (Europe) and individual countries (e.g. China and Japan) might give the impression that the graph is comparing apples and oranges. The intention, however, is to show that as far back as 1982, more than 80% of filings were made in Asia (2012: 92%), and 20% in Europe (2012: 6.3%).

A comparison by continent would hide the fact that the majority of utility model applications filed in Asia in the 1980s occurred in Japan, and in 2012 in China.

The changes in Asia are due to a number of reasons.

The reinstitution of the patent system in China in 1985 introduced the concept of invention, utility model and design patents. Filing figures for utility model patents (as well as for invention patent applications) have risen steadily since then.

The 1987 amendment of the Patent Law in Japan allowed multiple claims for patent applications and resulted in a significant shift in filings from utility models to patents.

In 1993 Japan amended its Utility Model System and abandoned substantive examination of utility models at the time of registration. Another significant shift of filings from utility models to patents was the result.

In Europe filings fell from around 50 000 in 1982 to fewer than 25 000 in 1990, before rising again above 50 000 in 2012. These developments have not been analysed.

More information can be found on the WIPO website at www.wipo.int/ipstats/en/statistics/models/.

1992 1993 1994 1995 1996 1997 1998 1999 2000 2001China 44 369 47 499 45 511 43 741 49 604 50 129 51 397 57 492 68 815 79 722Europe 29 303 34 439 35 883 36 224 37 367 38 579 37 427 39 185 39 367 38 276 Japan 94 601 77 101 17 531 14 886 14 082 12 048 10 917 10 283 9 587 8 806 Republic of Korea 28 665 32 205 39 790 59 856 68 822 45 809 28 890 30 650 37 163 40 804Russian Federation - 1 193 1 756 2 039 2 379 2 356 2 723 3 444 4 631 6 029Ukraine - - - 125 126 135 137 204 276 432

2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012China 93 139 10 9115 112 825 139 566 161 366 181 324 225 586 310 771 409 836 585 467 740 290Europe 34 343 43 020 45 725 48 168 50 047 39 225 4 8561 49 429 52 527 52 048 52 392Japan 8 603 8 169 7 986 11 387 10 965 10 315 9 452 9 507 8 679 7 984 8 112Republic of Korea 39 193 40 825 37 753 37 175 32 908 21 084 17 405 17 144 13 661 11 854 12 424Russian Federation - 7 622 8 948 9 473 9 699 10 075 10 995 11 153 12 262 13 241 14 069Ukraine 622 839 5 232 7 286 8 171 - 9 600 9 205 10 685 10 431 10 217


Looking at this graph, we can see that filing

figures in Japan and China have changed

dramatically over the last 30 years.

30 years ago utility models were mainly filed

in Japan and Europe, with, as of 1985, a few

thousand in China. By 2012 the situation was

very different in Asia, with 740 290 filings in

China and 8 112 in Japan, while in Europe the

figure – 52 392 – was very similar to what it

had been in 1982.

There are a number of reasons for these

developments in Asia.

In 1987 the Japanese Patent Law was amended

to allow multiple claims for patent applications.

This resulted in a significant shift from utility

models to patents.

In 1993 Japan amended the Utility Model

System and abandoned the examination

of utility models at the time of registration.

The result was a further significant shift from

utility models to patents.

In 1985 the reinstitution of the patent system

in China introduced invention, utility model

and design patents. Filing numbers for utility

models (as well as for patent applications)

have increased steadily since then.


Slide 103Recommendations and further reading

Anyone thinking of drafting and/or filing a utility model application should consult a professional first.

It is only too easy to overlook, say, a technical detail when drafting an application, and it is normally not possible to correct such errors after the application has been filed.

For more information see the following websites:

– World Intellectual Property Organization (www.wipo.int)

– Country profiles (www.wipo.int/directory/en/)

– Directory of Intellectual Property Offices (www.wipo.int/directory/en/urls.jsp)

– The patent offices of the EPO member states (www.epo.org/service-support/useful-links/national-offices.html)

– The websites of other national IP offices


Anyone considering filing a utility model

application should consult a professional first.

More information can be found on the websites

shown here.


Slide 104Quiz

1. Name three differences between patents and utility models.

Answer:– Utility models are normally unexamined registered

IP rights (exception: Brazil) and patents normally registered examined IP rights (exception: France).

– The duration of protection for patents is 20 years compared with a maximum of 10 years for utility models.

– Patent applications may be filed centrally with WIPO and the EPO.

2. Are utility models available in:

– all European states? (Answer: No)– all EPO member states? (Answer: No)– all EU member states? (Answer: No)

3 (a). What is the difference between "relative" and "absolute" novelty?

Answer: Absolute novelty means that any prior art worldwide is used for the assessment of the validity of the patent or the utility model. Relative novelty means that prior art in the country of application is relevant, but not prior art from other countries.

3(b). Some countries only assess relative novelty when examining the validity of a utility model. What are the consequences of this assessment?

Answer: A utility model may still be filed in one country for an invention that was already in use in another country before the date of filing of the utility model.

4. Are inventions in published utility models novel and inventive?

Answer: It depends. The answer to this question is often only investigated during litigation, in other words after the utility model concerned has been published.

5. Is the inventive step/inventiveness criterion always the same for utility models and patents in any one country?

Answer: It depends on national law and current practice.

6. Can a utility model offer protection for:

– a simulation process? (Answer: Normally not; depends on national law)

– a simulator? (Answer: Yes)



5 Designs

232 EPO/OHIM Intellectual Property Teaching Kit – IP Advanced Part I Designs


DesignsList of slides

Slide 105 DesignsSlide 106 Core conceptsSlide 107 Example of a designSlide 108 What is a design?Slide 109 What is a product?Slide 110 More examples of designsSlide 111 What cannot be classed as a designSlide 112 Why designs should be protectedSlide 113 How to obtain design rightsSlide 114 The Community design systemSlide 115 The registration procedure at national,

international and EU levelSlide 116 The registration procedure for RCDsSlide 117 Requirements for protectionSlide 118 Novelty (I)Slide 119 Novelty (II)Slide 120 Individual characterSlide 121 Exclusion from protectionSlide 122 What happens after registration (I)Slide 123 What happens after registration (II)Slide 124 What rights does the designer have?Slide 125 Scope of protectionSlide 126 Infringement and allowed usesSlide 127 Overlap with other IP rightsSlide 128 Quiz (i)Slide 129 Quiz (ii)

Designs


Slide 105Designs

EPO/OHIM Intellectual Property Teaching Kit – IP Advanced Part I 235Designs


Slide 106Core concepts

The aim of this presentation is not to turn students into experts on designs but to give them a general overview of the core concepts of design law and how designs work. These concepts are listed on the slide.

The presentation focuses on design law in Europe, including various aspects of the Community design system.


This slide lists the core concepts we will be

looking at in this module.


Slide 107Example of a design

The example on the slide gives students an idea of the sort of thing that can be considered a design. It illustrates the fact that designs relate to the outward appearance of a product.

The design pictured is registered Community design No. 1019913 0001, registered by Vitra Patente with the product indication "chairs". There are three different views of the same design. You can find this or any other registered design by going to eSearch Plus (for registered Community designs, or RCDs) or Designview (for registered designs from various EU countries) and entering the design number.


Here is an example of what we mean by a design.

The slide shows a registered Community design

owned by Vitra Patente and registered with the

product indication "chairs".


Slide 108What is a design?

A design is the outward or visible appearance of the whole or parts of a product, resulting from its features. These features can be:

− lines− colours− shapes− textures− contours− materials− ornamentation.

This is a very broad definition, without limitation. Any creation with visible aspects can be included. It is also an objective criterion. The appearance of the product is judged objectively. All subjective elements are excluded. The outward appearance of the product does not have to be aesthetically pleasing, attractive, appealing to the eye or particularly creative.

Designs are defined in Article 1(a) Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs ("Designs Directive"). This directive harmonised the design laws of the member states of the EU with regard to definition, requirements for protection, limitations to the design right, scope and term of protection and grounds for invalidity and refusal, but not with regard to procedural provisions, or provisions relating to sanctions, remedies and enforcement.

The same definition was adopted in Article 3(a) of the Community Designs Regulation (Council Regulation No. 6/2002 of 21 December 2001), or CDR. This regulation established the Community design system.

For more information about registered Community designs see the OHIM Manual of Design Practice, available at http://oami.europa.eu/ows/rw/pages/RCD/legalReferences/OHIMDesignManual.en.do.


A design is the outward or visible appearance

of the whole or parts of a product, resulting

from its features. These features include lines,

colours, shapes, textures, contours, materials

and ornamention.

This definition is without limitation and

includes any creation with visible aspects.


Slide 109What is a product?

A "product" is any industrial or handicraft item (Article 1(b) Designs Directive and Article 3(b) CDR).

Almost any industrial or handicraft item can be eligible for design protection, including the following: − the packaging of products − the design of normal single products− the design of composite products− sets of articles− parts of products− graphic symbols (and logos)– typographic typefaces− computer icons− drawings and artwork− ornamentation that can be put on several different

items− web designs− maps− get-ups: the arrangement of the interior of a room

(e.g. a hotel or conference room) or shop can also be protected as a design.

A product does not have to be produced on an industrial scale in order for it to be a design. The concept covers all products without limitation as to production method or volume of production. Designs protect all applied art.

We also talk about complex products, which are products made up of multiple components which can be disassembled and reassembled, for example a car or a blender (Article 1(c) Designs Directive and Article 3(a) CDR).


When we talk about "products" we mean any

industrial or handicraft item.

A few examples are shown on the slide, but

there are obviously many, many more. Almost

any industrial or handicraft item can be eligible

for design protection. A product does not have

to be produced on an industrial scale in order

for it to be a design.

Complex products are products composed of

multiple components which can be replaced,

permitting disassembly and reassembly of the

product.


Slide 110More examples of designs

Design rights can apply to many different types of product, i.e. industrial and handicraft items, created by many different industries and in many different sectors. The examples on the slide are as follows:

Packaging of productsPackaging for chocolates (RCD 785522 0001), Febreze sprayer (RCD 97969 0001)

Designs of normal single productsClock (RCD 23692 0008), chair (RCD 731849 0001)

Parts of productsPart of an item of footwear (RCD 1800244 0001)

Graphic symbolsLouis Vuitton print (RCD 84223 0001)

LogosUPS logo (RCD 139860 0001) (Note that this logo is also protected as a trade mark,i.e. a distinctive sign, Community trade mark No. 3121787)

Computer iconsWeather icon (RCD 910807 0002)

Ornamentation that can be placed on various different itemsHermès horses (RCD 537782 0012)

Complex products (products which are composed of multiple components which can be replaced, permitting disassembly and reassembly of the product)Volkswagen Beetle (RCD 3165 0002)

Community designs can be found in OHIM's eSearch Plus search database, which has basic and advanced search functions.


Here are some more examples of designs that

can be protected.

Packaging, such as for chocolate figures or for

a Febreze sprayer.

Normal single products, such as a clock and

a chair.

Parts of products, such as part of a shoe.

Graphic symbols, such as a Louis Vuitton print.

Logos, such as the UPS logo, which by the way

is also protected as a trade mark.

Computer icons, such as the weather icon in

the top right-hand corner.

Ornamentation that can be placed on various

different items, in this case the Hermès horses.

And finally, complex products such as the

Volkswagen Beetle.

These examples show the range of industries

and sectors that designs are used in.


Slide 111What cannot be classed as a design?

Functions of the productDesigns protect the outward or visible appearance of a product. They do not protect its technical function. They do not protect the abstract invention, although protection is available for the specific embodiment, in which case the same item will have multiple protection. The way a product solves a technical problem, i.e. the invention, will be protected by a patent or a utility model. However, the specific embodiment of the product may also be protected as a design, if, of course, it complies with the requirements for protection (for example, RCD 34269 001 – Profile milling tools with individual bits – is also protected by a German patent). Another condition for design protection is that the features of the product are not dictated entirely by its technical function.

Non-compliance with the definition of a designAccording to the definition, a design is the outward appearance of a product. Therefore, a mere idea, e.g. "the process of producing fertiliser", cannot be protected.

Smells and fragrances, like music and sounds, do not in themselves have any visible or outward appearance. However, the graphical representation of a musical composition could qualify as a design.

The following are also excluded, because they are not industrial or handicraft items:

– Products belonging to the natural world. Living organisms are not products. They are not industrial or handicraft items. A design which simply discloses the appearance of plants, flowers, fruits, etc. in their natural state will be refused.

– Colours per se without shape or contour. A single colour may be an element of a design, but on its own it does not comply with the definition of a design.

– Words in a standard typeface or sequences of letters without any additional figurative elements. Words or sentences as such, i.e. in standard characters in black and white, cannot be protected as designs. For example, the phrase "Win my wage" is not a design. However, with additional styling and the addition of a figurative element, it can be protected as a graphical symbol, which is considered to be a product (see RCD 837299 001).

It is important to be clear about what is protected by a particular design and what is not. For instance, blueprints, plans for houses and other architectural plans and interior and landscape designs will be considered "products" and will be accepted as "printed matter". However, the 2D plan or blueprint of a house is not the same as the 3D interior of the house. An objection will be raised if the product indicated in the application for a design consisting of the blueprint of a house is "houses".

Computer programs are excluded from design protection by law. They are, in particular, excluded from the definition of a product (Article 1(b) Designs Directive and Article 3(b) CDR). This concerns only the appearance of computer programs as such. Computer icons, web designs and graphical user interfaces are not excluded from protection.


Neither the technical function of a product

nor the abstract invention of the product

can be protected by a design. However,

design protection is possible for the specific

embodiment of the product, in which case the

same item will have multiple protection, that

is design protection and patent or utility model

protection.

Any item that does not comply with the

definition – in other words where there is a

lack of outward appearance or the item does

not have an industrial or handicraft nature –

is excluded.

A design is the outward appearance of a

product. Ideas, smells, fragrances,

music and sounds cannot be designs

in themselves.

The following are also excluded, because the

product is not an industrial or handicraft item:

– products belonging to the natural world;

– colours per se, without shape or contour;

and

– words in a standard typeface without any

additional figurative elements.

Computer programs are excluded from design

protection, although computer icons, web

designs and graphical user interfaces are not.


Slide 112Why designs should be protected

Designs are used to enhance the attractiveness and value of products. Take mobile phones as an example. Consumers now also buy the products because of the way they look.

A design can be an important element in enhancing a corporate image or brand. It can become an asset with increasing monetary value. If the designer or the company does not protect the creation, others might benefit from their investment. However, designs do not have to be attractive or aesthetically valuable in order for them to be protected as a design, as they are judged objectively.

A design can represent great added value to a company. It can make a business stronger on the market than its competitors. In some companies, it can represent the core business and be a key competitive advantage. Think, for example, of Crocs, or consider the value of the iPad for Apple Inc.

IP rights are intended to protect the creativity of businesses and individuals. However, they do not cover the same aspects:

– Designs do not have to be distinctive. There is no requirement for distinctiveness, as in the case of trade marks. Designs do not indicate the commercial origin of the products. That is not their function.

– The value of a design is not related to its technical functionality. Inventions which are products or processes that offer a new technical solution to a problem can be protected by patents.


Designs are used to enhance the attractiveness

and value of products. However, there is no

legal requirement for a design to be attractive

or aesthetically valuable in order for it to be

protected as a design.

Designs can represent great added value for a

company - think of Crocs, for example, or Apple.

If the designer or company doesn’t protect

their creation, others might benefit from their

investments.

Unlike trade marks, for example, which must

possess distinctive character, designs do not

have to indicate the commercial origin of the

product.

Furthermore, the value of a design is not related

to the technical functionality of the product.

Inventions which are products or processes that

offer a new technical solution to a problem can

be protected by patents.


Slide 113How to obtain design rights

We will now look at the different types of design protection available and how to obtain them.

Design rights can be either registered or unregistered.

Registered design rights can be obtained by registering the design with an IP office.

Unregistered design rights are obtained through disclosure to the public and use. There is no need for any type of registration. Unregistered designs can be useful for those types of product that have an exceptionally short lifespan, e.g. in fashion or in seasonal or holiday-related items. In such cases, the registration process might take too long compared with the time for which the design will be valuable. At EU level, the legislature has provided for unregistered Community designs (UCDs) as well as registered Community designs (see next slide).

In addition, some member states and national design systems - for example the UK - provide protection for unregistered designs. The advantages and disadvantages of the two types of design right will be explained in the following slides.


We will now look at the different types of

design right and how to obtain them.

Design rights can be either registered or

unregistered.

Registered design rights can be obtained by

registering the design with an IP office.

Unregistered design rights are obtained

through disclosure to the public and use.

Unregistered design rights can be useful

for those types of product that have an

exceptionally short lifespan, where the

registration process might take too long

compared with the length of time for which

the design will be valuable.

Designs can also be protected by copyright

law, provided that the outward appearance

of the product meets the legal conditions

for copyright protection. Design rights and

copyright can therefore co-exist for the same

product.


Slide 114The Community design system

The Community design system comprises two kinds of protection (Article 1(2) CDR): − unregistered Community designs (UCDs)− registered Community designs (RCDs)

Both have a unitary character, which is to say that they have equal effect throughout the EU. The design must therefore be registered, transferred or surrendered for the whole of the EU. The same principle applies to decisions on invalidity and prohibition of use (Article 1(3) CDR).

Advantages of UCDs: no filing necessary, so no costs. Protection is automatic after the design has been disclosed for the first time in the EU, for a period of three years (Article 11 CDR).

With UCDs, there is no need for a grace period, because protection starts after the first disclosure in the EU. There is also no initial filing date, so no priority has to be invoked. The invalidity of the design can be invoked only at a Community design court and not at the OHIM, because there is no registration.

On the other hand, UCDs offer protection against copying only. There is no protection against independent works or creations that may be identical or similar to it. Copying cannot be said to have taken place if the designer can reasonably be thought not to have been familiar with the design made available to the public. Furthermore, the designer will have to prove that the infringer has copied his earlier design. Proof of the date of the design's first disclosure is also required, and, while many types of evidence are permissible, this can nonetheless be difficult to establish. This minimal degree of protection is the main weak point of the UCD (Article 19(2) CDR).

For the designer, it is best to disclose the unregistered design for the very first time within the EU. Designs that are first disclosed outside the EU will destroy the novelty of the unregistered design (Article 110a(5) CDR). Protection as a UCD will, therefore, not be possible any more, since there is no grace period for unregistered designs. If the designer still wants protection in the EU, he will have to file for an RCD within one year after disclosure.

RCDs, on the other hand, offer full protection, not only against copying but also against independent creations and similar or identical designs. Proof of use is not necessary. There is no need to prove disclosure, since the design is registered. The certificate of registration is sufficient.

RCDs are protected for a longer period of time, i.e. five years, with renewal possible up to a maximum of 25 years. But be careful! The designer has to take into account the 12-month grace period. An RCD must be registered within the first 12 months after disclosure of the design if it is not to run the risk of being cancelled because of a lack of novelty. RCDs also enjoy the benefit of a six-month priority period. (The difference between the grace period and the priority date will be explained later.)

This kind of full protection comes at a cost. Registration at the OHIM is necessary and fees have to be paid, although these are not expensive. The cost is minimal, while the protection that is offered through registration is significant. After registration, invalidity proceedings can be introduced at the OHIM. In some cases, i.e. counterclaims, invalidity matters can be dealt with by the Community design courts.


The Community design system comprises

two types of design right: registered and

unregistered Community designs. This slide

compares the two.

With unregistered Community designs, no

filing is necessary and so there are no fees due.

The downside is that they only offer protection

against copying.

Registered Community designs, on the other

hand, offer full protection against independent

creations and similar or identical designs. Proof

of use is not necessary. However, registration

fees are payable, but these are reasonable and

unlikely to be a concern for designers.

Registered designs also offer protection for

a longer period of time - anywhere from 5 to

25 years.

Ultimately, it is a good idea to register designs

in order to benefit from the stronger protection

registration provides.


Slide 115The registration procedure at national, international and EU level

National levelAt national level, designs are registered with the relevant national intellectual property office.

International levelAt international level, applications are filed directly with the International Bureau of WIPO. Applicants must designate in the application the exact countries where protection is wanted. It is not possible to designate any other country later, because of the novelty requirement.

The International Bureau receives the application, but does not examine it on substantive grounds. All it does is check the formalities before sending the application to the national offices of the designated countries or the designated regional offices. These offices will examine the application according to their national laws. An international application thus results in a bundle of nationally or regionally registered designs and not in an internationally registered design as such.

The international route has many advantages compared with the national route. The application procedure and subsequent management of the design rights are simplified greatly. Instead of filing multiple applications with multiple offices, involving multiple languages, currencies, registrations and renewals, applicants can register with one single office, using a single language and currency and requiring a single renewal.

EU levelAt EU level, it is possible to obtain a registered Community design which is valid for the whole of the EU. This also has many advantages:

− one simple and fast registration procedure to get protection in the entire EU

− one single application − one language of filing − one administrative centre (OHIM)− one single file to be managed − one single payment in euros− the possibility of filing multiple applications (i.e. of

including several designs in one application, such as a whole range of similar products)

− the possibility of keeping the design confidential for up to 30 months, i.e. deferred publication

− a broadened scope of protection. Disputes concerning the infringement or validity of a Community design can be brought before the Community design courts. These are national courts designated by EU member states to have jurisdiction in respect of Community designs. Their decisions may have effect throughout the whole territory of the EU. This can avoid the need to prosecute infringers in each member state. For more on the Community design courts, see Articles 80–92 CDR.


At national level designs are registered with

the relevant national IP office.

International applications are filed directly

with the International Bureau of WIPO,

the World Intellectual Property Organization.

Applicants must make sure that they designate

in their applications all the countries in which

they want to obtain protection, as, because

of the novelty requirement, it is not possible

to add more countries later.

An international registration does not result

in an internationally registered design as

such. Rather, the result is a bundle of different

nationally or regionally registered designs.

The international route has many advantages

compared with the national route, not least of

which is the fact that the application procedure

is much simpler. It involves a single application,

with a single office, in a single currency, and

with a single renewal application and fee.

At EU level, it is possible to obtain a registered

Community design, which is valid for the whole

of the EU. This also has many advantages.

Applicants can register a single application with

the OHIM, in any one of the EU languages, for

one single payment.

Registered Community designs also offer

broader legal protection through the

Community design courts.


Slide 116The registration procedure for RCDs

The EU registration procedure is very fast. This is important because of the limited lifespan of some designs. In the textile or shoe industries, for example, a design may be valuable only for a couple of months or for one season.

RCD applications can be filed either directly with the OHIM or with any of the national IP offices of the EU member states. Applications to the OHIM may be filed online (recommended, as the quality of the representations of the design is less likely to be compromised), by fax (not recommended, as the quality of the representations may suffer, for example discoloration may occur when documents are scanned) or by mail. Forms are available for applicants wishing to file an application by fax or mail.

The examination of the application is very limited and comprises:

− A formalities examination, which includes checking the name, address, signature, priorities, fees, indication of product and classification etc. The indication of the product must be worded in such a way that its nature is clear, preferably using the terms appearing in the list of products according to the Locarno Classification. The applicant can consult the OHIM’s own online classification tool, EuroLocarno. The indication of the product and the classification do not affect the scope of protection.

− An examination of the two possible grounds for refusal of a design. First, is it a design? In other words, does the subject of the application constitute a "design" in accordance with the definition? The registration will be rejected if the item does not consist of the outward appearance of a product or part of it, or if it is not an industrial or handicraft item. If the item complies with the definition of a design, the second question can be asked: is the design contrary to public policy or morality?

There is no substantive examination regarding the novelty or individual character of the design, or whether or not the component parts are visible during normal use, or whether or not the design is solely dictated by its technical function. The examiner does not look into the existence of earlier rights or whether or not the applicant is entitled to register the design.

If the result of the examination is positive, the application will be registered in the Community Design Register and then published in the RCD Bulletin (Part A). The applicant may choose however to delay the publication of the RCD by a maximum of 30 months from the date of filing the application (or from the date of the earliest priority claimed), which is known as "deferment of publication" as established in Article 50 RCD.

During the examination process, the OHIM does not check whether an application for an RCD infringes an intellectual property right belonging to a third party, and it is not possible for such a third party to introduce an opposition procedure against the registration. However, once a Community design has been registered (and following publication of the registration), a third party may apply for a declaration of invalidity. This means that, throughout an RCD’s life, it may be declared invalid following invalidity proceedings. The OHIM has exclusive jurisdiction with regard to direct invalidity applications. The different national Community design courts also have jurisdiction, but only regarding counterclaims in infringement proceedings. The different grounds of invalidity will be discussed later.

Any final decision by one of the Office’s bodies, in so far as it has adversely affected a party, is subject to appeal on the initiative of that party. The party adversely affected by a decision is either the applicant, in the case of total or partial rejection of his design application, or the losing party in an invalidity decision. The appeal is brought before the Office’s boards of appeal (Article 55 et seq. CDR). However, the OHIM offers a mediation service in inter partes proceedings. If the parties choose mediation, the appeal proceedings are suspended. Mediation allows the parties to reach an amicable settlement without the requirement for a decision from the boards on the substance of the conflict.

For more information on the registration process, go to http://oami.europa.eu/ows/rw/pages/RCD/regProcess/regProcess.en.do.


The chart shows the different steps in the

registration procedure.

RCD applications can be filed either with the

OHIM itself or with any of the national IP offices

of the EU member states.

The examination of applications is very limited.

It is made up of a formalities examination,

which includes checking whether the

application indicates the product the design

is applied to, and examination of the two

possible grounds for refusal of a design, that is

non-compliance with the definition, and breach

of the provision concerning public order and

morality.

If the result of the examination is positive, the

application will be registered in the Community

Design Register and then published in the RCD

Bulletin.

The RCD registration procedure has no

opposition procedure. A third party can invoke

the invalidity of a registered design only after

publication of the registration. The OHIM has

exclusive jurisdiction with regard to direct

invalidity applications.

Any final decision is subject to appeal on the

initiative of the adversely affected party.

Appeals are brought before the Office’s boards

of appeal. The parties can also opt for the

mediation service offered by the OHIM.


Slide 117Requirements for protection

Before a design can be protected, it has to fulfil two essential and substantive conditions. It has to be novel, or new, and it has to possess individual character (Article 3(2) Designs Directive and Article 4(1) CDR).

If it lacks either novelty or individual character, it will not be protected against infringement or copying by third parties. Even if it fulfils the two requirements, it can still be excluded from protection. In national and EU law, some designs in particular are excluded, e.g. for reasons of public interest.

Note that designs which lack novelty or individual character can still be registered with some IP offices (e.g. the OHIM), owing to a lack of ex officio examination of these conditions by the office in question. However, a design which is not new and/or not individual will risk invalidity after registration.


A design can be protected only if it fulfils both

of the substantive requirements shown here,

in other words novelty and individual character.

A design that is new but without individual

character is excluded from protection, likewise

one that has individual character but is not new.

However, even if a design does fulfil the

two requirements, there are still certain

circumstances under which it can be excluded

from protection, for instance for reasons of

public interest.


Slide 118Novelty (I)

All designs must be new. What does this mean exactly?

No identical designThe novelty requirement can be fulfilled only if no identical design has been made available to the public earlier, i.e. before a certain date.

Identical designs include designs whose features differ only in "immaterial details". This means that the two designs do not necessarily have to be identical in all features. An example of an immaterial detail is a slight variation in the shades of the colour palettes used in the compared designs (see, for example, Boards of Appeal decision of 28/07/2009, R 0921/2008 3 – 'Nail files', paragraph 25).

No disclosureA design must also be new in the sense that the designer may not have made his own design available to the public before the date of filing an application. Once the design has been made available to the public, it is no longer new. The designer must keep the design confidential. This obligation is somewhat weaker than in patent law, in that the designer enjoys a so-called "grace period" of 12 months.

The 12-month grace period precedes the filing date or priority date of the national or Community design. Disclosure of the design is not taken into consideration if it was made available by the designer (or his successor in title) and within the 12-month period. The Community or national design must thus be registered within the first 12 months after disclosure. If the designer does not register his design within that period, the design is no longer novel. Only the designer can enjoy the benefit of the grace period.

What is the difference between the grace period and the priority date? If the applicant claims priority when applying for a design, this means that, within six months from the filing date with the national office or the OHIM, the applicant can file a national design or an RCD under the priority of the first application. Protection will run from the first date, i.e. the date of the first application.

The right of priority is laid down in Articles 41–44 CDR and Article 4 of the Paris Convention for the Protection of Industrial Property (Paris Convention"), which can be consulted at www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html#P145_20374.

Relevant date The relevant date for establishing whether another identical design has been made available to the public earlier differs depending on the type of design. For registered designs, the relevant date is the date of filing of the application or the priory date. For unregistered designs, there is no application and thus no filing date. The date on which the design was disclosed to the public, e.g. through advertising or use, is the date to be taken into account.

The relevant legal texts with regard to assessing novelty are Articles 5 and 7 CDR and Articles 4 and 6 Designs Directive.


All designs must be new. What does this mean

exactly?

Firstly, no identical design must have been

made available to the public at an earlier date.

Secondly, no other designer or undertaking

must have made an identical design available to

the public earlier, that is before a certain date.

Identical designs include designs that differ in

"immaterial" details only. An example of an

immaterial detail is a slight variation in the

shades of colour patterns in the designs under

comparison.

Designers must not have made their design

available to the public before the date of filing

of the application. They must keep the design

confidential. This obligation is weakened by

the 12-month grace period that precedes the

filing date or priority date of the national or

Community design.

What is the difference between the grace

period and the priority date? Well, the 12-month

grace period precedes the filing date or the

priority date of the national or the Community

design. Disclosure of the design is not taken

into consideration if it was made available

by the designer (or his successor in title) and

within the 12-month period. The Community or

national design must therefore be registered

within the first 12 months after disclosure.

If the designer does not register his design

within that period, the design is no longer

novel. Only the designer can enjoy the benefit

of the grace period.

If the applicant claims priority when applying

for a design, this means that, within six months

from the date of filing the application with the

national office or OHIM, he can file another

national design or RCD under the priority of the

first application. Protection will run from the

first date, i.e. the date of the first application.

The relevant date for assessing novelty differs

depending on the type of design in question.

For registered designs, it is the date of filing

of the application or the priority date.

For unregistered designs, it is the date on which

the design was disclosed to the public.


Slide 119Novelty (II)

A design is considered to have been made available to the public if it has been exhibited, used in trade, published (following registration or otherwise) or in any other way disclosed (through the internet, in a magazine, etc.). This concept is very broad: any disclosure anywhere in the world and at any point in time will be taken into account.

However, the concept has a very important limit. Unlike in the case of patents, the prior design will be deemed not to have been made available to the public if the act of disclosure could not reasonably have become known in the normal course of business to specialised circles in the relevant sector in the EU. Therefore, the design will be deemed to have been made available to the public only if specialised circles within the EU in a given sector are aware of or have knowledge of the design. If specialised circles outside the EU have knowledge of a particular design but those within the EU do not, the design will be deemed not to have been made available to the public.

Additionally, as in patent law, there is no disclosure if the design was disclosed to a third party under explicit or implicit conditions of confidentiality. For example, disclosure of a design to a third party within the context of commercial negotiations is ineffective if the parties agreed that the information exchanged should remain confidential. Concluding a non-disclosure agreement can be sufficient.

See Article 6(1) Designs Directive and Article 7(1) CDR.


A design is considered to have been made

available to the public if it has been exhibited,

used in trade, published (following registration

or otherwise) or in any other way disclosed,

for example through the internet or in a

magazine. Any design made available to the

public anywhere in the world at any time can

constitute a prior design.

This broad concept of disclosure has two

important limits.

Firstly, unlike in the case of patents, a design

will be deemed to have been made available

to the public only if specialised circles within

the EU in a given sector are aware of or have

knowledge of it.

Secondly, disclosure of a design to a third party

under a condition of confidentiality does not

destroy the novelty of the design.


Slide 120Individual character

In addition to meeting the novelty requirement, a design must also have individual character. In other words, it can be new – i.e. no other identical design exists – and yet still lack individual character.

The requirement for individual character means that the design must give a different overall impression from any other design disclosed earlier. The overall impression which a design produces on the informed user must differ from the overall impression produced on such a user by any other earlier design which has been made available to the public.

Overall impression"Overall impression" means that the designs have to be compared globally. The way the product is used by the informed user has to be taken into account. When assessing the overall impression, the informed user will pay less attention to features that are banal and common to the type of product in question. He will concentrate on the features that are arbitrary and different from the norm.

Informed userThe "informed user" is an intermediate character. He is neither a designer nor a technical expert. He is a person who has some awareness of existing designs in the sector concerned. He possesses a certain degree of knowledge with regard to the features that those designs normally include. As a result of his interest in the products concerned, he shows a relatively high degree of attention when he uses them. However, his degree of attention or his awareness is not so high that he would know which aspects of the product are dictated by its technical function. The informed user is neither a manufacturer nor a seller of the products. However, sometimes the informed user is made up of two groups, depending on the nature of the product in question.

Legal texts: Article 5 Designs Directive and Article 6 CDR.

Relevant case law:− Overall impression: European Court of Justice

judgment of 20/10/2011, C 281/10 P, ‘Metal Rappers’.− Informed user: European Court of Justice judgment of

20/10/2011, C 281/10 P, ‘Metal Rappers’; General Court judgment of 9/09/2011, T 10/08, ‘Kwang Yang’;, General Court judgment of 14/06/2011, T 68/10, Sphere Time; and General Court judgment of 22/06/2010, T 153/08, ‘Shenzhen Taiden’.

For more about the Grupo Promer/Metal Rappers case, see the design case study module.


In addition to fulfilling the novelty requirement,

designs must also have individual character.

This means that they must create a different

overall impression from any other designs

disclosed earlier. Whether or not the overall

impression is different must be assessed from

the point of view of the informed user.

"Overall impression" means that the designs

have to be compared globally, while taking

into account the way in which the product is

used by the informed user and the comparative

weight this user attributes to the different

features of the designs.

The "informed user" is an intermediate

character, situated somewhere between

a designer or a technical expert and an

average consumer. His level of attention and

awareness of prior designs is relatively high.


Slide 121Exclusion from protection

Some items/designs are excluded from protection.

Public policy and moralityA design may not be contrary to public policy or accepted principles of morality. Obscene, racist or immoral images or messages are not acceptable. Flags and religious symbols used in a proper and decent way are tolerable. The same applies to images of famous people. Designs depicting them without their permission are allowed. However, it is not always easy to differentiate between an offence to morality and mere bad taste. For example, RCD 80841 was accepted as a Community design.

Given the unitary character of Community designs, if a design causes offence to morality in one member state, that is sufficient to exclude it from protection in the whole territory of the EU (Article 1(3) CDR) – see, by analogy, the judgment of the General Court regarding a Community Trade Mark application representing the Soviet coat of arms (judgment of 20/11/2011, T 232/10, ‘Couture Tech’, paragraphs 37 and 62). (Article 8 Designs Directive and Article 9 CDR.)

Technical functionIf the features of the appearance of the product are solely dictated by a technical function, the design is excluded from protection. This applies where the features of the product were chosen exclusively in order to design a product that would perform its function. If at least some features of the product were, to some degree, chosen for the purpose of enhancing the visual appearance of the product, the design was not dictated solely by the product’s technical function. The technical features of a design can be protected by a patent or a utility model. Only if all the features of the design are solely dictated by its technical function will the design as a whole be declared invalid. If only one feature is dictated by its technical function, then that particular feature will be denied protection. (Article 7(1) Designs Directive and Article 8(1) CDR.)

Complex productsFor component parts of complex products there exists a visibility requirement. Parts that are not visible during "normal use" of the product are excluded from protection. Normal use is the use that is made of the product by the end consumer. This excludes maintenance, servicing and repair work by experts. For example, the component parts of a car that are located under the bonnet of the car are not visible during normal use. The headlights of the car, on the other hand, are visible during normal use and can be protected as designs. (Article 3(3) Designs Directive and Article 4(2) CDR.)

Must-fit exemptionDesigns of interconnection are also excluded by law. This is the so-called "must-fit" exemption. There can be no design protection for features of a product which must be formed in a certain way to make that product fit into another product or to mechanically interconnect the products. In this case, the appearance of this feature of a product must necessarily be reproduced in a precise form and to precise dimensions; otherwise, the product will not fit into or cannot be connected to another product (Article 7(2) Designs Directive and Article 8(2) CDR).

There is only one exception to this must-fit exemption: interchangeable products within a modular system are excluded. This is called the "Lego exemption", after the toy building bricks (Article 7(3) Designs Directive and Article 8(3) CDR).


Some items or designs are excluded from

protection.

This is the case if the design is contrary to public

policy or to the accepted principles of morality.

Obscene, racist or immoral images or messages

are not acceptable. Flags and religious symbols

which are used in a proper and decent way are

tolerable.

Design protection is also not available if the

features of the appearance of the product

are solely dictated by a technical function.

This applies where the features of the product

were chosen exclusively to design a product

that performs its function.

For component parts of complex products,

there is a visibility requirement. Parts that are

not visible during "normal use" of the product,

that is use by the end consumer, are excluded

from protection.

Designs of interconnection are also excluded by

law. This is the so-called "must-fit" exemption

for features of a product which are necessary

to interconnect it mechanically with another

product.


Slide 122What happens after registration (I)

After registration, designs are protected for an initial period of five years. Protection runs from the date of filing of the application, not from the date of registration. The term of protection can be renewed for one or more periods of five years each. The maximum term of protection is 25 years from the date of filing. This means that designs can be renewed a maximum of four times (Article 10 Designs Directive and Article 12 CDR).

Use of a design is not obligatory. Non-use does not constitute grounds for invalidity of the design.

Design law differs from trade mark law in this respect. Trade marks must be used. A lack of so-called "genuine use" of a trade mark constitutes grounds for revocation.

In terms of the different territorial scope of protection, Community designs have effect in the entire EU, i.e. in all the member states. National designs offer protection in the individual member states in which they are registered. Designs registered at the Benelux Patent Office are protected in the three Benelux countries.


After registration, designs are protected for

an initial period of five years from the date of

filing of the application. The term of protection

can be renewed for one or more periods of five

years each, up to a maximum of 25 years.

Use of a registered design is not obligatory,

and non-use does not represent grounds for

invalidity of the design.

Community designs have effect throughout the

entire EU, in all the member states. National

designs offer protection in the member state or

states in which they were registered.


Slide 123What happens after registration (II)

Some designs may be declared invalid during their lifespan. A third party can invoke the invalidity of a design. In the case of RCDs, any natural or legal person can submit a direct application for a declaration of invalidity to the OHIM (Article 52(1) CDR).

There are several grounds on which both RCD and national designs may be declared invalid (Article 25 CDR and Article 11 Designs Directive).

− The design does not correspond to the definition of a design and is therefore not a design.

− The design does not fulfil the requirements of protection, i.e. novelty, including disclosure, and individual character.

− The design is excluded from protection. This includes the component parts of the complex product which are not visible during normal use, the design is solely dictated by the technical function, it constitutes a design of interconnection or the design is contrary to public policy or morality.

− The registered holder is not entitled to the design. In this case, a court decision might be needed.

− The design is in conflict with a prior design.− The design makes unauthorised use of an earlier

distinctive sign, e.g. a trade mark, or a work protected by copyright.

− The design constitutes an improper use of items listed in Article 6ter of the Paris Convention or other emblems of public interest in a member state.

Once a design has been declared invalid, it is deemed not to have had any effects from the outset (Article 26 CDR).


There are various grounds for invalidity.

They include cases where the design fails

to meet the definition of a design and where

the requirements for protection are not met.

This means that the design is not novel or has

no individual character.

Invalidity claims can also arise where the

design is excluded from protection because

the component parts of a complex product

are not visible during normal use, the design is

dictated by the technical function, it is a design

of interconnection, or the design is contrary to

public policy or morality.

Other cases include where the registered

holder is not entitled to the design, the design

is in conflict with a prior design, or the design

constitutes an improper use of items listed

in the Paris Convention or other emblems of

public interest in a member state.


Slide 124What rights does the designer have?

The protection offered by registered rights is complete. It gives the designer the exclusive right to use the design and to prevent others from using it. This covers, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied. It also covers the stocking of such a product for any of these purposes (Article 12 Designs Directive and Article 19(1) CDR).

Designers of unregistered designs can prevent third parties from making, offering, etc. any product into which the design is incorporated, but only if that use results from the copying of the protected design.

The protection is against the unauthorised use of the design, no matter what product it is applied to. The (Community) design protection covers the design itself, independently of the type of object to which the design is applied.

For example, if someone registers a radio as a Community design and someone else copies it, or uses the same design for another type of device, or even prints it on a T-shirt to be sold, then the right-holder could stop him from doing so.


The protection offered by registered design

rights is complete. It gives the designer the

exclusive right to use the design. This includes

the making, offering, putting on the market,

importing, exporting or using of a product in

which the design is incorporated or to which it

is applied.

Any of these actions relating to a product into

which the design is incorporated or to which

it is applied needs the authorisation of the

right-holder. The exclusive right also covers

the stocking of such a product for any of these

purposes.

The protection is against the unauthorised use

of the design. It therefore covers the design

itself, that is the appearance of the product, no

matter what product it is applied to.


Slide 125Scope of protection

Article 10 CDR and Article 9 Designs Directive offer protection against:

− any identical design− any design which differs in "immaterial details" (the

design is deemed to be identical)− any design which does not produce on the informed

user a different overall impression.

The right-holder has the exclusive right over a registered design with the same overall appearance.

However, when determining the scope of protection, the degree of freedom of the designer in developing his design must be taken into account. This degree of freedom depends on the nature and intended purpose of the product into which the design is incorporated and the type of (industrial) sector to which the product belongs. The only constraints to the degree of freedom of the designer that can be taken into account are those resulting from the technical function of the product or the statutory requirements that are applicable in the sector.

The more a designer’s freedom is restricted, the more likely it is that minor differences between two designs at issue will be sufficient to leave an overall impression on the informed user. A design that differs in details is deemed to be an infringement only if the degree of freedom of the designer is high. If the degree of freedom is high, then minor differences will not be sufficient to produce a different overall impression.

Relevant case law: European Court of Justice judgment of 20/10/2011, C 281/10 P, ‘Metal Rappers’. For more details see the design case study module.


Design rights offer protection against

– any identical design

– any design which differs in "immaterial

details", as such a design is deemed to be

identical, and

– any design which does not produce on the

informed user a different overall impression.

These concepts are the same as the ones we

came across in connection with the "individual

character" requirement.

When determining the scope of protection,

the degree of freedom of the designer in

developing his design has to be taken into

account. This freedom can be constrained by

the technical function of the product or the

statutory requirements that are applicable in

the sector.


Slide 126Infringement and allowed uses

What constitutes an infringement of a design right? An infringement is any act carried out without the authorisation of the designer or right-holder involving a product to which the design has been applied. The right-holder has the exclusive right to make the design, use it, offer it on the market etc.. Third parties are prohibited from doing this.

However, there are limits to the extent of the protection afforded by the design. Some acts or uses of the design by third parties are permitted, without the need for authorisation (Article 20 CDR and Article 13 Designs Directive).

Allowed use− Private acts for non-commercial purposes.− Acts carried out for experimental purposes.− Academic citations. These are acts of reproduction for

the purpose of making citations or of teaching. This use is only allowed provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source.

− In some member states, there exists a "must-match exemption" resulting from a "repair clause" in national law. This exemption relates to the use of the design of a component part of a complex product for the purpose of the repair of that complex product to restore it to its original form. The component part must aesthetically match the complex product. Examples of must-match: car chassis, car doors, etc. (Article 14 Designs Directive).

− Exhaustion of rights within the EU. The basic principles of the internal market have to be taken into account, including the free movement of goods. Once a product has been put on the market by the holder of the (Community) design or with his consent, this article is free to circulate in the whole of the EU. A product that incorporates the design or to which the design applies is free to circulate after it has been put on the internal market (Article 15 Designs Directive and Article 21 CDR).

Must-fit and must-match Some design features enable one product to be functionally fitted or aesthetically matched to another. These features are excluded from design protection. These are the so-called "must-fit" and "must-match" exemptions.

These exemptions ensure that competing designs of spare parts are not kept out of the market. In this way, competitors cannot be prevented from using or copying features of a protected design. They have to copy some features in order to functionally connect or aesthetically match their design to the existing product of the owner of the design.

What is the difference between the two? Must-fit deals with technical connection and fitting. Must-match deals with the aesthetic matching of two products.


An infringing act can be defined as any act of

use of the design by a third party without the

authorisation of the designer.

However, some acts or uses of the design are

allowed. These include:

– private acts for non-commercial purposes,

– acts carried out for experimental purposes,

and

– academic citations, that is, acts of

reproduction for the purpose of making

citations or of teaching.

In some member states, there exists a "must-

match" exemption due to a "repair clause" in

national law. This exemption relates to the use

of the design of a component part of a complex

product for the purpose of the repair of that

complex product in order to restore it to its

original form.

Finally, a product that incorporates the design

or to which the design is applied is free to

circulate after it has been put on the EU internal

market by the holder of the Community design

or with his consent.


Slide 127Overlap with other IP rights

Registered designs are not the only form of protection available for the appearance of a product.

Protection by registered design right does not exclude protection by other IP rights, such as unregistered design rights, trade marks or other distinctive signs, patents and utility models, typefaces, civil liability and unfair competition, at national and EU level (Article 16 Designs Directive).

While the shape of a product could be registered as a design, it could at the same time also be a distinctive sign, capable of indicating the commercial origin of the product. The same applies to logos.

Designs registered in a member state are also eligible for protection under the copyright law of that state as of the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such protection is conferred, including the level of originality required, are determined by each member state (Article 17 Designs Directive).


Protection by a registered design right does not

exclude protection by other IP rights such as

trade marks, patents and utility models.

This applies at both national and EU level.

Designs can also be protected under national

copyright law. Copyright is not harmonised

at EU level, so the conditions for acquiring

protection, such as the level of originality

required, are determined by national law.


Slide 128Quiz (I)

1. What are the two main elements in the definition of a design?

The two main elements in the definition of a design are "outward appearance" and "product". The appearance results from various features of the product, such as lines, colours and shapes. A product is any industrial or handicraft item, including parts of a complex product.

2. Give examples of items which cannot be considered designs.

Examples include computer programs, items which are not handicraft or industrial items, items that have no outward or visible appearance, and the technical function of the product, more specifically products belonging to nature, colours per se, industrial processes, mere ideas and smells.

3. What do you consider the best option for protecting designs?

The question invites students to consider the pros and cons of registered and unregistered designs. The main weak point of unregistered designs is the fact that they only offer protection against copying of the design. Moreover, the designer or right-holder has to prove the use of the design and the point in time when it was first disclosed to the public.

With registered design rights, protection is stronger and proof of use is unnecessary. The right-holder has a certificate of registration to fall back on.

So, on the whole, registered design rights are the better option. But in some cases unregistered design rights are more useful, particularly for products with an exceptionally short lifespan, for which the registration process might take too long compared with the length of time for which the design will be valuable.

4. Explain the registration procedure at international level. Where can you file? What is the end result? What are the advantages?

The main steps and features of the international registration procedure are as follows:

– International applications are filed with the International Bureau of WIPO (World Intellectual Property Organization).

– Applicants must designate from the start of the procedure all the countries in which they want to obtain design protection. Note that the EU as a whole can also be designated.

– Applications are examined by the relevant national offices or by the OHIM. The International Bureau merely performs a formalities check.

– The end result is a bundle of nationally or regionally registered designs.

– The main advantage is that the application procedure and the subsequent management of the design rights are simplified.


We will now work through a short quiz covering

the different aspects of design protection which

we have looked at in this module.


Slide 129Quiz (II)

5. Can the holder of an RCD oppose the registration of another, identical Community design?

No, there is no opposition procedure. The holder of the earlier RCD will have to wait until after the publication of the registration of the later RCD to introduce an invalidity procedure based on lack of novelty.

6. Besides novelty, which other substantive conditions must a design fulfil to be protected under design law?

A design can be protected only if it fulfils two substantive conditions, namely the novelty requirement and the requirement for individual character. The latter condition means that the design must create a different overall impression on the informed user from that created by any other design disclosed earlier.

Students could also be asked at this stage about the meaning of the terms "overall impression" and "informed user".

7. How is the novelty of RCDs assessed?

Generally speaking, any disclosure anywhere in the world and at any point in time will be taken into account and can destroy the novelty of the design. However, a design will be deemed to have been made available to the public only if specialised circles within the EU in a given sector are aware of or have knowledge of the design. In addition, a design is not considered to have been made available to the public if it has been disclosed to a third party under the explicit or implicit condition of confidentiality.

8. Name some of the allowed uses for which third parties do not need authorisation.

To know which uses are allowed by law, we first need to establish the exclusive rights designs confer and which acts fall within the scope of protection of the design.

– Design protection confers exclusive rights, preventing others from making, offering, using etc. any product into which the design is incorporated or to which it is applied.

– The scope of protection extends to any identical design (including designs deemed identical because, for example, they differ in immaterial details) and any design which does not produce a different overall impression on the informed user.

However, even if a certain act of use falls within the scope of protection, there is no infringement if the use is allowed by law, e.g. mere private acts carried out for non-commercial purposes or acts carried out for experimental purposes.



6 Design case study

286 EPO/OHIM Intellectual Property Teaching Kit – IP Advanced Part I Design case study

Design case studyList of slides

Slide 130 Design case studySlide 131 BackgroundSlide 132 The two registered community

designs involvedSlide 133 Timeline of decisionsSlide 134 Questions raised by the caseSlide 135 Was the prior design disclosed?Slide 136 Timeline for disclosure of the

prior designSlide 137 Can bad faith constitute grounds

for invalidity?Slide 138 Was the later design in conflict with

the earlier one?Slide 139 Who is the informed user in this case?Slide 140 Court of Justice: The informed user as

an intermediate notionSlide 141 Relevant product categorySlide 142 Degree of freedom of the designerSlide 143 General Court decision on the degree

of freedom of the designerSlide 144 Same overall impression?Slide 145 Board of Appeal: Different overall

impressionSlide 146 General Court: Same overall

impression Slide 147 Outcome of the case

Design case study EPO/OHIM Intellectual Property Teaching Kit – IP Advanced Part I 287


EPO/OHIM Intellectual Property Teaching Kit – IP Advanced Part I 289Design case study


Slide 131Background

This case study focuses on "rappers" or "pogs". Rappers are made of metal or plastic and are used as promotional items to help sell other goods. They are especially used in the food industry, for example in bags of crisps or biscuits. They were extremely popular during the 1990s. Rappers used in this way bear coloured images of a type that would appeal to young children. However, the designs that are registered and owned by the parties in our case study lack any type of colour or image.


The case study we will be looking at in this

module concerns "rappers" or "pogs".

Rappers are used as promotional items in the

food industry, for example in bags of potato

crisps or biscuits. They are especially designed

to appeal to young children.


Slide 132The two registered Community designs involved

The two parties involved in the dispute in our case study are Grupo Promer Mon-Graphic S.A. and PepsiCo Inc. Grupo Promer is a Spanish promotional marketing agency and the owner of the earlier registered Community design, which was registered with the product indication "metal plates for games". The other party in the case is PepsiCo, a US multinational food and beverage corporation and the owner of the contested registered Community design (RCD), which is registered for "promotional items for games".

The two designs are shown on the slide. A comparison of the designs shows that they have certain features in common.

– Both designs consist of small discs that are almost flat. They are round in shape.

– Both have a concentric circle very close to the edge, intended to convey the idea that the disc curves all the way round the edge.

– Both have another concentric circle approximately one-third of the way from the edge to the centre. This circle is intended to convey the idea that the central part of the disc is raised slightly.

– In both designs, the rounded edge of the disc is raised in relation to the intermediate area of the disc, i.e. the area between the edge and the raised central area.

– The dimensions of the raised central part and the intermediate area of the disc are similar in the two designs.

The designs differ from each other in that:

– PepsiCo’s design has two additional circles towards the centre.

– In profile, it can be seen to be more curved.

The relevant registered Community design numbers are:

– Grupo Promer: No. 53186 0001– PepsiCo: No. 74463 0001

Both designs can be found in OHIM’s eSearch Plus database.


The two parties involved in the dispute in our

case study are Grupo Promer, the owners of

a registered Community design – or RCD –

registered for "metal plates for games", and

PepsiCo, proprietor of an RCD registered for

"promotional items for games", which was

registered shortly after the Grupo Promer

design. We will see the precise timeline shortly.

What are the similarities and differences

between the two designs?

There are similarities with regard to the shape

of the discs, the edges and the dimensions.

There are differences between the profiles and

the concentric circles.


Slide 133Timeline of decisions

On 20 June 2005, OHIM's Invalidity Division declared the design belonging to PepsiCo invalid on the basis of Article 25(1)(d) of the Community Design Regulation (CDR). It concluded that it produced the same overall impression on the informed user as the Grupo Promer design.

PepsiCo then filed a notice of appeal with OHIM. By decision of 27 October 2006, OHIM's Third Board of Appeal annulled the decision of the Invalidity Division and dismissed the application for a declaration of invalidity. The board held that the PepsiCo design was not in conflict with the design belonging to Grupo Promer and that the overall impressions made on the informed user by the two designs were different.

By a judgment of 18 March 2010, the General Court annulled the decision of the Board of Appeal. It upheld the appeal and declared PepsiCo’s design invalid pursuant to Article 25(1)(d) CDR. The design was in conflict with the prior RCD.

The Court of Justice upheld the judgment of the General Court and declared that the PepsiCo design was invalid.

Relevant decisions:

– Invalidity Division decision of 20 June 2005, ICD 172– Third Board of Appeal decision of 27 October 2006,

R 1001/2005 3 – 'Metal Rappers'– General Court judgment of 18 March 2010, T 9/07,

'Grupo Promer'– Court of Justice judgment of 20 October 2011,

C 281/10 P, 'PepsiCo'.

Other related decisions:

– Invalidity Division decision of 1 July 2005, ICD 180– Invalidity Division decision of 1 July 2005, ICD 198


On 20 June 2005, the OHIM's Invalidity Division

declared the PepsiCo design invalid on the

basis of Article 25(1)(d) of the Community

Design Regulation, or CDR. It concluded that it

produced the same overall impression on the

informed user as the Grupo Promer design.

PepsiCo then filed a notice of appeal with the

OHIM. By a decision of 27 October 2006, the

Third Board of Appeal annulled the decision

of the Invalidity Division and dismissed the

application for a declaration of invalidity.

The board held that the PepsiCo design was not

in conflict with the design belonging to Grupo

Promer and that the overall impression made

on the informed user by the two designs was

different.

By a judgment of 18 March 2010, the General

Court annulled the decision of the Board of

Appeal. It upheld the appeal and declared

PepsiCo’s design invalid pursuant to Article

25(1)(d) CDR, holding that it was in conflict with

the prior design.

The Court of Justice upheld the judgment of the

General Court and declared PepsiCo’s design

invalid.


Slide 134Questions raised by the case

The case raises a number of interesting questions.

Some concern Article 25 (1)(b) CDR. If a design lacks novelty and individual character, it will be declared invalid. In order for this ground for refusal to be applicable, the prior design must have been made available – or disclosed – to the public. But how do we define "disclosure"?

Are there any grounds for invalidity other than those mentioned in the Community Design Regulation, for instance bad faith on the part of the applicant of the later design?

What about the ground for invalidity mentioned in Article 25(1)(d) CDR, which concerns designs that are in conflict with prior designs? But what does "in conflict" mean?

The main question in this case is whether or not the later design produced the same overall impression on the informed user as the prior design. But who is the informed user? And what about the degree of freedom of the designer?


The case raises a number of interesting

questions.

When can a prior design be considered to have

been disclosed? Can bad faith on the part of the

owner of a contested design constitute grounds

for invalidity?

Was the later design in conflict with the earlier

one?

Who is the informed user? What is the degree

of freedom of the designer, and in relation to

which products? Do the two designs produce

the same overall impression?


Slide 135Was the prior design disclosed?

Grupo Promer (GP) invoked Article 25(1)(b) CDR. This ground for invalidity refers to Articles 4-7 CDR, i.e. lack of novelty and individual character. It can be applicable only if a prior design has been disclosed, in other words if it has been made available to the public.

In this case, the relevant date for assessing whether or not the PepsiCo design was novel and had individual character was the date of priority of the RCD, i.e. the date on which the application for the Spanish design was filed. So the question was, had GP’s design been disclosed or made available to the public before 23 July 2003?

The next slide shows a timeline of the relevant dates.


Grupo Promer claimed under Article 25(1)(b) of

the Community Design Regulation that the

PepsiCo design lacked novelty and individual

character. This can only be applicable if a

prior design has been disclosed, that is, made

available to the public.

In this case, the relevant date for assessing

whether or not the PepsiCo design was novel

and had individual character was the date of

priority of the earlier registered Community

design, which is the date on which the

application for the Spanish design was filed.

Had the prior design been disclosed?

Let's have a look at the timeline on the next

slide.


Slide 136Timeline for disclosure of the prior design

GP claimed that its design destroyed the novelty and individual character of the PepsiCo design because it had been shown in good faith to a subsidiary company of PepsiCo on 21 February 2003, that is before the date on which PepsiCo filed both the Spanish design application and the RCD application. GP submitted that its prior design had been "disclosed" to PepsiCo on a private and confidential basis by letter within the context of commercial discussions, and that the basic lines of that design had been copied in the contested PepsiCo design.

According to Article 7 CDR, a prior design forms an obstacle to the novelty and individual character of a contested RCD only where it has been made available to the public before the priority date of the contested RCD. However, it shall not be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.

In this case, GP’s design had not been made available to the public within the meaning of Article 7 CDR. Since the disclosure to the PepsiCo subsidiary had been made under conditions of confidentiality, the prior design was not deemed to have been disclosed. In such a case, Article 25(1)(b) CDR is not applicable. There was no disclosure.


The prior design was shown to a subsidiary of

PepsiCo on 21 February 2003 during private

and confidential commercial discussions. It

was not made available to the public, since

the discussions took place under conditions of

confidentiality.


Slide 137Can bad faith constitute grounds for invalidity?

GP argued that PepsiCo’s design had been registered in bad faith and that PepsiCo had copied GP’s design, which had been shown to it under conditions of confidentiality.

The General Court confirmed the decisions of the Invalidity Division and the Board of Appeal and stated that Article 25(1) CDR lists the grounds on which an RCD may be declared invalid. That list must be regarded as exhaustive, since Article 25 stipulates that a Community design may be declared invalid only on one of the grounds specified in it.

The Court noted that no reference is made to the bad faith of the proprietor of a contested design. Therefore, the question of alleged bad faith is irrelevant, since it is not a matter of ruling on the conduct of the proprietor of the contested design (see judgment of 18 March 2010, T 9/07, 'Grupo Promer', paragraph 31).


Grupo Promer claimed that the PepsiCo design

had been registered in bad faith. Could this be

grounds for invalidity?

The answer is no. The grounds for invalidity

mentioned in Article 25(1) of the Community

Design Regulation are exhaustive. They do not

include bad faith.


Slide 138Was the later design in conflict with the earlier one?

Article 25(1)(d) CDR states that a Community design may be declared invalid if it is in conflict with a prior design which has been made available to the public after the date of filing of the application or, if a priority is claimed, the date of priority of the Community design, and which is protected from a date prior to the said date.

In this case, the prior design belonging to GP had been made available to the public after the priority date of PepsiCo's Community design, which was 23 July 2003. Disclosure of the prior Community design took place on 1 November 2003, i.e. on publication of the Spanish design.

The concept of "conflict" is not defined in the Regulation. It was up to the courts to provide clarification.

The Invalidity Division and the Board of Appeal took the view that a conflict arises when – taking into consideration the degree of freedom available to the designer in developing the design – two designs produce the same overall impression on the informed user (see judgment of 18 March 2010, T 9/07, ‘Grupo Promer’, paragraph 52). When dealing with an application based on Article 25(1)(d) CDR, the same test as for the assessment of individual character under Article 25(1)(b) CDR read in conjunction with Article 6 CDR will be applied.

The basic issue that has to be resolved is whether or not the two designs produce the same overall impression on the informed user. This question can be answered only by taking into consideration the degree of freedom of the designer in developing the contested Community Design.

The General Court has confirmed this point of view. It refers to the scope of protection of Community designs as laid down in Article 10 CDR, which states that the scope of protection conferred by a design is to include any design which does not produce on the informed user a different overall impression and that, in assessing the scope of that protection, the degree of freedom of the designer in developing his design is to be taken into consideration. Moreover, the Court indicated that the overall impression was a visual one (see judgment of 18 March 2010, T 9/07, 'Grupo Promer', paragraph 50).


Article 25(1)(d) of the Community Design

Regulation states that a Community design

may be declared invalid if it is in conflict with a

prior design which has been made available to

the public.

As the concept of "conflict" is not defined in the

Regulation, it was up to the General Court to

interpret the notion. It referred to the scope of

protection of a Community design. The scope of

protection includes any design which does not

produce a different overall impression on the

informed user.

Article 25(1)(d) of the Regulation therefore has

to be interpreted as meaning that a Community

design is in conflict with a prior design when,

taking into consideration the degree of freedom

available to the designer, that design does not

produce on the informed user a different overall

impression from that produced by the prior

design.


Slide 139Who is the informed user in this case?

According to the Invalidity Division, the informed user in this case is familiar with promotional items for games. He knows that they are marketed with their surfaces covered by graphical elements. The informed user is aware that the targeted consumers would pay more attention to these graphical elements than to small variations in the basic shape of the items.

The Board of Appeal found that the informed user could be a child in the approximate age range of five to ten years (since the products are promotional items intended for young children) or a marketing manager in a company that makes goods which are promoted by giving away 'pogs' or 'rappers'. It made little difference which of these categories of person was treated as the informed user. The point was that both would be familiar with the phenomenon of rappers.

The General Court confirmed this assessment. It found that the informed user was:

– neither a manufacturer nor a seller of the products into which the designs were intended to be incorporated or to which they were intended to be applied;

– particularly observant and with some awareness of the state of the prior art, i.e. previous designs relating to the product in question that had been disclosed on the date of filing of the contested design or on the date of priority claimed.

It too took the view that the informed user may, on the one hand, be a child in the approximate age range of five to ten years, since the rappers are intended specifically for children, and, on the other, a marketing manager in a company that uses this type of goods in order to promote its own products, by giving away these rappers or pogs. It makes little difference which of these two is the informed user. The important point is that both those categories of person are familiar with the phenomenon of rappers.


In order to assess whether the two designs in

this case produce the same overall impression

on the informed user, a decision had to be taken

as to who the informed user is.

The Invalidity Division found that the

informed user is someone who is familiar with

promotional items for games.

The Board of Appeal found that the informed

user could be either a child aged five to ten or

a marketing manager. It makes little difference

which of them is treated as the informed

user, as both are familiar with the product

concerned.

The General Court confirmed the Board’s view

and found that the informed user is neither a

manufacturer nor a seller of the products. He is

particularly observant and has some awareness

of the state of the prior art, and could be a child

or a marketing manager.


Slide 140Court of Justice: the informed user as an intermediate notion

The Court of Justice confirmed that the concept of the informed user is an intermediate notion that lies somewhere between that of the average consumer in trade mark law and an expert with detailed technical expertise (see judgment of 20 October 2011, C 281/10 P, 'PepsiCo', paragraph 53).

The level of attention of the informed user, therefore, also lies somewhere between the level of attention of an average consumer and that of an expert in the sector. The informed user is a particularly observant one. This is the result of either his personal experience or his extensive knowledge of the sector in question. Thus the informed user is not the well-informed and reasonably observant and circumspect average consumer, who normally perceives a design as a whole and does not proceed to analyse its various details. In addition, he is not an expert, a designer or a specialist capable of examining in detail the minimal differences that may exist between designs in conflict (see paragraph 59 of the same judgment).

"Informed" means that the user (1) knows the various designs which exist in the sector concerned, (2) possesses a certain degree of knowledge with regard to the features which those designs normally include and (3), as a result of his interest in the products concerned, shows a relatively high degree of attention when he uses them.

The Court also stated that the very nature of the informed user means that, when possible, he will make a direct comparison between the designs at issue. However, it cannot be ruled out that such a comparison may be impracticable or uncommon in the sector concerned, in particular because of specific circumstances or the characteristics of the devices. It is not necessary to take as a starting point the view that an informed user would in all likelihood make a direct comparison of the designs at issue. The assessment will not always take the form of a direct comparison. The method of comparison might be based on an imperfect recollection of one of the designs in question (see paragraphs 55–58 of the 'PepsiCo' judgment).

The Court came to the conclusion that in this case the General Court was right in holding that the informed user could be either a child or a marketing manager.


The Court of Justice confi rmed the General

Court’s fi nding. It held that the notion of the

"informed user" is an intermediate concept,

and that there is a clear diff erence between

the informed user and, on the one hand, the

average consumer and, on the other, the expert

in the sector with detailed technical expertise.

The level of attention of the informed user

is also intermediate. The informed user is

more than just reasonably observant. He is a

particularly observant user, but is not capable

of examining minimal diff erences in detail.

According to the defi nition, to be "informed"

means having a knowledge of the various

designs, a knowledge of the normal features

of such designs and a relatively high degree of

attention during use.

Assessments made by the informed user do not

always take the form of a direct comparison. He

might base his assessment on, for example, an

imperfect recollection of one of the designs in

question.

The Court concluded that the informed user

could be a child or a marketing manager.


Slide 141Relevant product category

When the two designs in our case study were compared, the degree of freedom of the designer had to be taken into account. The assessment of the degree of freedom depends on the category of products that is taken into account.

The Invalidity Division decided to consider all promotional items for games as the relevant category. This was the product indication on the PepsiCo application. The Board of Appeal, on the other hand, took into consideration only the particular type of promotional items in question, namely rappers or pogs.

This, of course, affected what they considered to be the degree of freedom of the designer (see next slide).

The General Court confirmed the Board’s decision on this. It referred to Article 36(2) CDR, which states that an application for an RCD must contain an indication of the products into which the design is intended to be incorporated or to which it is intended to be applied. However, that information does not affect the scope of protection of the design. The Court also stated that the design itself must be taken into account in so far as it can make clear the nature of the product, its intended purpose or its function (see judgment of 18 March 2010, T 9/07, 'Grupo Promer', paragraphs 55 and 56).

The General Court confirmed that only the particular category of rappers is relevant and not the entire category of promotional items (paragraph 60 of the same judgment).


Another factor in our case study was the degree

of freedom of the designer. Any assessment of

the degree of freedom of the designer depends

on the category of products that is taken into

account.

The Invalidity Division decided to consider

all promotional items for games. The Board

of Appeal took into consideration only the

particular type of promotional item in question,

namely rappers or pogs.

The General Court confirmed the Board’s

decision on this. The indication of the product in

the design application does not affect the scope

of protection. The design itself has to be taken

into account. In this case the design belonged to

a particular category of promotional items, that

is game pieces known as rappers.


Slide 142Degree of freedom of the designer

Because the Invalidity Division considered that the relevant product category was all promotional items, it found that the designer enjoyed a large degree of freedom when developing the design. His freedom was restricted only in that the items must be inexpensive, safe for children and fit to be added to the promoted products. As a result, the fact that the two designs were both round in shape with an outer edge surrounding a central area was in itself sufficient for the Division to conclude that the overall impression produced on the informed user was the same.

The Board of Appeal, on the other hand, considered that the degree of freedom that the designer had in developing the design was severely restricted. It noted that the paradigm for this type of product consists of a small, flat disc made of plastic or metal. Often, the disc is curved towards the centre, so that a noise is made when a child presses his finger on the centre of the disc. The Board observed that a rapper which did not possess these characteristics was unlikely to be accepted in the marketplace.

Note that the Board of Appeal considered not only technical constraints but also the common features of the rappers dictated by market constraints, i.e. limitations dictated by commercial or economic considerations.

A designer working within these constraints has little freedom. It follows that, in these circumstances, even relatively small differences will suffice to create a different overall impression.


The Invalidity Division considered that the

relevant product category was "all promotional

items". The Board of Appeal considered that it

was rappers only. This difference had an impact

on the degree of freedom each attributed to

the designer.

The Invalidity Division decided that the designer

enjoyed a large degree of freedom, indicating

only that the items must be inexpensive, safe

for children and fit to be added to promoted

products.

It held that the designs gave the same overall

impression.

The Board of Appeal considered that the

freedom of the designer was severely restricted,

and that the designer also had to take account

of market constraints. As a result, it held that

relatively small differences were sufficient to

create a different overall impression.


Slide 143General Court decision on the degree of freedom of the designer

The General Court confirmed the Board of Appeal’s findings.

It noted that the designer’s degree of freedom in developing his design is established by, inter alia:

– the constraints of the features imposed by the technical function of the product or an element thereof

– statutory requirements applicable to the product (see judgment of 18 March 2010, T 9/07, 'Grupo Promer', paragraphs 67 and 72).

Those constraints result in a standardisation of certain features, which will thus be common to the designs applied to the product concerned.

It also held that the Board of Appeal was correct in stating that the designer’s freedom was severely restricted, since he had to incorporate the required features common to all rappers into his design for the product in question.


The General Court confirmed the Board of

Appeal’s findings on the degree of freedom of

the designer.

It noted that the designer’s degree of freedom

in developing his design is established by,

amongst other things, technical constraints

and statutory requirements. These constraints

result in a standardisation of certain features,

which will be common to all designs in a certain

category.


Slide 144Same overall impression?

The final question was whether or not the two designs produced the same overall impression on the informed user. This, of course, had to be assessed taking into consideration the degree of freedom of the designer, which in this case was deemed to be severely restricted.


The final question was whether or not the two

designs produce the same overall impression on

the informed user.


Slide 145Board of Appeal: different overall impression

The Board of Appeal came to the conclusion that the overall impression produced on the informed user was different. The Board found that the designer’s freedom was severely restricted, not only by technical or statutory requirements but also by market constraints.

It stated that, in determining whether or not two designs produce the same overall impression on the informed user, it is necessary to disregard elements that are totally banal and common to all examples of the type of product at issue. The informed user will automatically discard such features when appraising the overall impression caused by two designs and will concentrate on features that are arbitrary or different from the norm.

The two designs have many similarities. However, these are features common to all rappers or pogs on the market. They have to be small and nearly flat. The fact that the discs are curved towards the centre is a market constraint. Otherwise, the disc will not make any noise when a child presses the centre with his finger and will therefore not be accepted in the marketplace.

Considering the many common features, the difference in the contours of the raised areas in the centres of the discs can hardly be dismissed as insignificant. It results in a difference between the discs that will not go unnoticed by an observant user. Given the limited freedom of the designer in developing the design, the difference between the profiles of the two designs is sufficient to produce different overall impressions on the informed user.


The Board of Appeal came to the conclusion

that the overall impression produced on the

informed user was different. It found that the

designer’s freedom was severely restricted, not

only by technical or statutory requirements but

also by market constraints.

The informed user will disregard elements that

are totally banal and common to all examples

of the type of product at issue. Instead, he will

concentrate on features that are arbitrary or

different from the norm.

The Board stated that the two designs have

many similarities. However, these are features

common to all rappers on the market. They

have to be small and nearly flat. The fact that

the discs are curved towards the centre is a

market constraint, because otherwise the disc

won’t make a noise.

Given the limited freedom of the designer

in developing the design, small differences

suffice to leave a different overall impression

on the informed user. The difference in the

profile of the two designs will therefore not

go unnoticed.


Slide 146General Court: same overall impression

When the General Court summed up the similarities and differences between the two designs it indicated how they would be perceived by the informed user.

Similarities

– Small, almost flat discs. This common feature of the type of design at issue would not be remembered by the informed user in the overall impression.

– A concentric circle very close to the edge, intended to convey the idea that the disc curves all the way round the edge. This similarity is dictated by safety considerations. Since the designs at issue may be applied to metal products and the product is intended for children in particular, that rounded edge may, therefore, constitute a constraint on the designer, obliging him to ensure that the product does not have a sharp edge if it is made of metal, or even of plastic or cardboard. This feature will therefore not attract the informed user’s attention.

– Another concentric circle, approximately one-third of the way from the edge to the centre, intended to convey the idea that the central part of the disc is raised slightly. The Court found that the central part could have been delineated by a shape other than a circle, such as, for example, a triangle, a square, a hexagon or an oval (see judgment of 18 March 2010, T 9/07, ‘Grupo Promer’, paragraph 79). In this regard, the designer did enjoy some freedom, according to the General Court. However, it should be borne in mind that, in commerce, the discs are covered by images. A shape other than a circle could distort the image covering the disc. According to the Court, however, a triangular or hexagonal shape, or even a square or oval, would not distort the image any more than a circle. At this point, the General Court referred to two other variants of the Spanish design by PepsiCo, in which the central area is delineated by a triangle and a hexagon. It is worth noting that these designs were registered as Community designs but were later declared invalid by the Invalidity Division of OHIM because they produced the same overall impression on the informed user as the prior Grupo Promer design.

– The rounded edge of the disc is raised in relation to the intermediate area of the disc, i.e. the area between the edge and the raised central area.

– The respective dimensions of the raised central part and the intermediate area of the disc are also similar.

The General Court considered that the last three similarities were not dictated by any technical or statutory constraints. The designer had thus been free to develop a design which differed from the prior design. Those similarities would therefore attract the informed user’s attention, all the more so because the upper surfaces were the most visible.

Differences

– The PepsiCo design has two additional circles towards the centre.

– When the designs are viewed in profile, it can be seen that the contested design is more curved.

The General Court found that, since the degree of curvature was slight and the discs were thin, the difference would not be easily perceived by the informed user, particularly if the products were viewed from above. It concluded that the differences were insufficient for the contested design to produce a different overall impression on the informed user. The Board of Appeal had, therefore, erred in law.

It is clear that the General Court did not take into account the market constraints, i.e. the curved central area and the circular central bulge. These features make it possible for the rappers to produce sound when the centre is pressed and also allow the discs to be stacked. Rappers with central bulges which are not circular cannot be stacked with the vast majority of rappers, which do have this circular bulge.

The question was raised before the Court of Justice of whether or not it was necessary to consider these market constraints when determining the degree of freedom of the designer. The Court found this ground inadmissible. A finding of a factual nature made by the General Court cannot be called into question.


In assessing the overall impression created by

the two designs, the General Court summed up

the similarities and differences between them.

It also commented on the manner in which they

would be perceived by the informed user.

The similarities included the fact that both discs

were almost flat, which is a common feature of

rappers. They both had a concentric circle very

close to the edge, intended to convey the idea

that the disc curved all the way round the edge,

and another concentric circle, approximately

one-third of the way from the edge to the

centre, intended to convey the idea that the

central part of the disc was slightly raised

slightly. Both had a rounded edge, for safety

reasons, and similar dimensions.

The General Court held that these similarities

would therefore attract the informed user’s

attention, all the more so because the upper

surfaces were the most visible.

As far as the differences were concerned,

the PepsiCo design had two additional circles

towards its centre, and there was a slight

difference in curvature between the two

designs.

The Court concluded that these differences

were insufficient for the contested design to

produce a different overall impression.


Slide 147Outcome of the case

PepsiCo's registered Community design was declared invalid. It did not produce on the informed user a different overall impression from that created by the prior design.

This was confirmed by the Court of Justice.


PepsiCo’s registered Community design was

therefore declared invalid.


7 Design exercise

326 EPO/OHIM Intellectual Property Teaching Kit – IP Advanced Part I Design exercise

Design exerciseList of slides

Slide 148 Design exerciseSlide 149 Requirements for registrationSlide 150 Representation of the designSlide 151 Grounds for invaliditySlide 152 Neutral background (I)Slide 153 Neutral background (II)Slide 154 Same product? (I)Slide 155 Same product? (II)Slide 156 Same product? (III)Slide 157 Same product? (IV)Slide 158 ExerciseSlide 159 Exhibition of the designSlide 160 Other design: RCD No. 819313-0008.Slide 161 QuestionsSlide 162 Points for discussionSlide 163 AnswersSlide 164 Disclosure Slide 165 Which of these grounds for invalidity

could be applied?Slide 166 The informed user and the designer's

degree of freedomSlide 167 Overall impressionSlide 168 Further reading

Design exercise EPO/OHIM Intellectual Property Teaching Kit – IP Advanced Part I 327


Slide 148Design exercise

EPO/OHIM Intellectual Property Teaching Kit – IP Advanced Part I 329Design exercise


Slide 149Requirements for registration

We will start by recapping the requirements for registration.

For a design to be successfully registered, certain conditions have to be met.

First of all, there are two substantive conditions. If either one of them is not fulfilled, the design will not be registered.

− The design must comply with the definition set out in Article 3(a) of the Community Designs Regulation (CDR), which states that a design is the appearance of the whole or a part of the product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.

− It must not be contrary to public policy and morality.

Applications for registration must also comply with certain formalities requirements. According to Article 36 CDR, they must contain:

− a request for registration− information identifying the applicant− a representation of the design that is suitable for

reproduction− an indication of the products into which the design is

intended to be incorporated or to which it is intended to be applied.


We will start this module by recapping the

requirements for design registration.

For a design to be successfully registered,

it has to fulfil two substantive conditions.

Firstly, it must comply with the definition

of a design. Secondly, it must not be contrary

to public policy and morality.

In addition, applications for a registered

Community design must comply with certain

formal requirements. They must contain a

request for registration, information identifying

the applicant, a representation of the design,

and a product indication.


Slide 150Representation of the design

To register a design successfully with OHIM, a good-quality representation of the design is essential.

The representation can consist of photographs, computer drawings or drawings by hand. These can be in black and white or in colour.

The representation may contain no more than seven different views of the same design. Any one graphic or photographic reproduction may contain no more than one view.

The reproduction must be of a level of quality that makes it possible to distinguish clearly all the details of the design for which protection is sought.

The design must be reproduced on a neutral background. The representation may not be retouched with ink or correcting fluid. If all of the views of the design are of poor quality and/or are not reproduced on a neutral background, the applicant will be given an opportunity to replace them with new ones. The filing date will be the date when the new views are received. If only some of the views are unacceptable, the applicant has two options: he can replace the deficient reproductions with improved ones and consequently obtain as a filing date the date on which the new views are received by OHIM, or he can simply withdraw those views and benefit from the original date of filing of the acceptable views. If there is no response at all from the applicant regarding the incorrectly submitted views, the application will be rejected.

Another important requirement is that all (seven) views must show the same product.

Furthermore, the reproduction may not contain any explanatory text, numbers or symbols. The applicant does have the option to explain the representation of the design, but, if he chooses to do so, he has to include a description of the design in the application separately from the representation of it.

The representation must show the design as a whole. It is not permissible to include detailed views of parts of the design. This situation must be distinguished from one in which an applicant wishes to register only a part of a specific product, e.g. part of an item of footwear. In such a case, the applicant must draw attention to the part of the product he wants to register as a design. He

can do this by putting the relevant part in colour where the rest of the product is in black and white; by circling it; by drawing it using unbroken lines where the rest of the product is drawn using dotted lines; or by slightly blurring the other parts.

When an application is filed for the design of a set of articles or a complex product, at least one representation must consist of a global view of the product.

For more on the representation of designs, see Article 4 of the Community Designs Implementing Regulation (CDIR).


As far as the representation of the design is

concerned, it can consist of photos, computer

drawings or drawings by hand, in black and

white or in colour. What is essential is that they

are of good quality.

The representation must be provided on a

neutral background. It may contain no more

than seven different views of the same design,

which must all be of the same product.

It may not contain any explanatory text. It must

show the design as a whole, and may not show

detailed views of parts of the design.


Slide 151Grounds for invalidity

A Community design may be declared invalid if it lacks novelty or individual character (Article 25(1)(b) CDR).

According to Article 5 CDR, registered Community designs (RCDs) lack novelty if an identical design has been made available to the public prior to the date of filing of the RCD. A design is deemed to be identical if its features differ in immaterial details only.

According to Article 6 CDR, an RCD lacks individual character if the overall impression it produces on the informed user is the same as the overall impression produced on such a user by any design which has been made available to the public prior to the date of filing of the RCD. When individual character is assessed, account is taken of the fact that the degree of freedom available to the designer may be limited.

The informed user is an intermediate character who is neither a designer nor a technical expert. He is a person who has some awareness of prior existing designs in the sector concerned. He possesses a certain degree of knowledge with regard to the features that those designs normally include. As a result of his interest in the products concerned, he shows a relatively high degree of attention when he uses them. However, his degree of attention and awareness is not so high that he would know which aspects of the product are dictated by a technical function. The informed user is neither a manufacturer nor a seller of the products.

The designer’s degree of freedom in developing his design is established by the constraints of the features imposed by the technical function of the product or by statutory requirements applicable to the product. Those constraints result in a standardisation of certain features, which will thus be common to the designs applied to the product concerned (see judgment of 18/03/2010, T 9/07, ‘Metal rappers’).

The greater the designer’s freedom, the less likely it is that minor differences between the designs at issue will be sufficient to produce a different overall impression on an informed user. Conversely, the more the designer’s freedom in developing the challenged design is restricted, the more likely it is that minor differences between the designs at issue will be sufficient to produce a different overall impression (see judgment of 09/09/2011, T 10/08, 'Design of an internal combustion engine').

If the designer enjoys a high degree of freedom in developing a design, this reinforces the conclusion that similar designs without significant differences will produce the same overall impression on the informed user.

The grounds for invalidity of lack of novelty and lack of individual character both require proof that an earlier design conveying an identical or a similar overall impression was made available to the public before the date of filing the application for registration of the RCD.

The design must have been disclosed to the public prior to the filing date (Article 7 CDR). The public in question is made up of the members of specialised circles in the sector concerned, operating in the EU. Whether or not a design enjoys legal protection is irrelevant. It is not necessary for the design to be registered or otherwise protected as a copyrighted work, trade mark, utility model or other. What matters is that it constitutes a design within the meaning of Article 3(a) CDR, i.e. the appearance of the whole or a part of a product resulting from its features.

A design is considered to have been made available to the public when it is published following registration, or if, for example, it is exhibited or used in trade. Disclosure anywhere in the world and at any point in time can be taken into account. Events that could not reasonably have become known in the relevant circles in the EU are not considered.


A Community design may be declared invalid if

it lacks novelty - in other words if an identical

design has been made available to the public

– or if it lacks individual character – in other

words if the design does not produce a different

overall impression on the informed user.

For the grounds for invalidity to be applicable,

the design must have been disclosed to the

public, either by way of publication following

registration, or of exhibition or use in trade, or

in some other way.


Slide 152Neutral background (I)

Designs must be reproduced on a neutral background. The representation must show only the design and nothing else.

In the image on the left, it is not clear for which product protection is being sought. Is it the design of the lounge chair? Is it the get-up or interior of the room? The design is not represented on a neutral background. The representation does not comply with the requirements of Article 36(1)(c) CDR and Article 4(1)(e) CDIR.

The application will be rejected unless the applicant replaces the view with a representation on a neutral background. The date when the new view is received by the OHIM will be the filing date.

The second image on the slide is a correct and acceptable representation of the design.


We shall now look at some examples of the

formalities requirements that applications for

registered Community designs must fulfil, in

particular the requirement for a good-quality

representation of the design.

In the image on the left, the design is not

represented on a neutral background. It is not

clear for which item design protection is being

sought. Is it the chair, the television, or even the

get-up of the room?

The second image, on the other hand, is an

acceptable representation.


Slide 153Neutral background (II)

This representation is acceptable. There can be no confusion about the design for which protection is sought. The background shows only trees and grass, that is objects belonging to the natural world, which cannot constitute a design.


In this example, the background is not

neutral, but the representation of the design

is acceptable. All the items in the background

belong to the natural world, that is they are

items which cannot comply with the definition

of a design. There can therefore be no

confusion about what the applicant wants to

register as a design.


Slide 154Same product? (I)

This example (and the three that follow) deals with the question of whether or not the same product is depicted.

Here, all four representations show the same product but each time from a different angle. The application will be accepted.


The four representations show the same

product but from four different angles.

The application would be accepted.


Slide 155Same product? (II)

The slide shows two different products. The second chair has an additional element in the form of the crossbars to the left and right between the front and back legs which are not visible in the left-hand image.

The designs are therefore different and the application would be rejected.


The images on the slide show two different

products. The second chair has an additional

element – cross-bars between the front and

back legs – that cannot be seen in the left-hand

image. The application would therefore be

rejected.


Slide 156Same product? (III)

The slide shows the same bottle but from different angles.

The application would be accepted.


The slide shows the same product but from

two different angles. The application would be

accepted.


Slide 157Same product? (IV)

A design is "the appearance of a whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation" (Article 3(a) CDR).

Because the designs displayed are in different colours, they do not relate to the same product and therefore the application would be rejected.


The two items on the slide differ in colour.

According to the definition of a design in the

Community Design Regulation, this means

that they do not relate to the same product.

This application would therefore be rejected.


Slide 158Exercise

The second part of this presentation consists of an exercise relating to the grounds for invalidity of a design, including in particular lack of distinctive character.

A designer working for a small European company that designs and makes rugs travelled around the world looking for inspiration for his designs, On one of his trips, he noticed how the locals were making felt balls in all sorts of colours. Afterwards, they would sew them together to make all kinds of different products. It turned out that this was an old tradition in many countries. In Nepal and India, the production of these rugs has become a small fair-trade business.

Back at home, he designed a rug made of felt balls for his company. The rug comes in many different colours. The top seller is a rug made of multi-coloured felt balls. The company has several invoices relating to this rug, including:

− An invoice dated 24 July 2007 and made out to a company in Portugal. Under the heading ‘Other Carpets’ a reference is made to '4 Balls Rug (Felted), Color Multi' with a size of '140 x 200'.

− Another dated 5 November 2007 and made out to a company in Germany for '32 Balls Rugs Felted Balls, Color Multi'.

The rug also featured in the company's catalogue under the description 'Balls Rug (Multi) Felt Balls'. It was displayed on its exhibition stall at numerous fairs, including the IMM-Cologne trade fair, which was held in January 2007.

One day, the designer came across a rug very similar to his own design. The company producing it had obtained a registered Community design under the number 819313 0008. The filing date was 1 November 2007.


The actual exercise in this module relates to the

grounds for invalidity of a design, including in

particular lack of distinctive character.

This case involves a designer who works for

a small European company that designs and

makes rugs. He has designed a rug made of felt

balls. The rug comes in many different colours.

The company's top seller is a rug made of multi-

coloured felt balls. The designer has several

invoices relating to the rug, including one dated

24 July 2007 and made out to a company in

Portugal, and another dated 5 November 2007

and made out to a company in Germany.

The rug has also featured in the company's

catalogue under the description 'Balls Rug

(Multi) Felt Balls'. It has been displayed

at numerous trade fairs, including the

IMM-Cologne fair, which was held in

January 2007.

One day the designer came across a

rug very similar to his own design.

The company producing it had obtained

a registered Community design with the

number 819313-0008. The filing date was

1 November 2007.


Slide 159Exhibition of the design

This slide shows the first company's exhibition stall at a trade fair in Cologne. The rug is on the floor.


Here you can see the first company’s exhibition

stall at the IMM-Cologne trade fair in January

2007. The rug in question is the one on the floor.


Slide 160Other design: RCD No. 819313-0008

This slide shows one view of the registered design. We can see the similarities between the two designs, but we can also see the main difference, which is in the way the felt balls are arranged.


This is the rug that is very similar in design.

It is registered Community design

No. 819313-0008, filed on 1 November 2007.


Slide 161Questions

Ask the students to imagine that the designer and his company come to them for advice. Go over the relevant questions.

First of all, what are the consequences of the registered Community design? Could it affect the designer’s business?

If so, what can the company do to protect itself? What legal grounds can it invoke? Does it matter that it does not have a design registration for its own design?

If legal action is possible, what will be the outcome?


Put yourselves in the position of a consultant

advising the designer and his company. Might

this registered Community design affect the

company’s business? If so, what can they do

about it?

– Do they have legal grounds for an invalidity

action?

– If so, what will be the outcome?

The points to bear in mind are that there are

various references to the company's rug, for

example in the invoices that were sent out

in July and November 2007. Also, the rug was

featured in the company's catalogue and

formed part of an exhibition stall in January

2007. However, the company never registered

the design.


Slide 162Points for discussion

Ask the students to think about the scope of protection that registered Community designs offer and the consequences this has for other companies. What options are there to limit this protection or block it entirely?

The company in this example could file an invalidity action before the OHIM, but which grounds for invalidity would be applicable? Under what conditions are registered Community designs considered to lack novelty or individual character? What condition do the grounds have in common?

The main point for discussion is whether or not the company's design was disclosed to the public before the date of filing.


What is the scope of protection offered by

registered Community designs?

What are the options for limiting or even

blocking this protection?

What about invalidity of the design?

With regard to disclosure, does the company

have enough evidence to prove its statements?


Slide 163Answers

The protection offered by registered designs is complete. They give the designer the exclusive right to use the design and prevent others from making, offering, putting on the market, importing, exporting or using any product into which the design is incorporated or to which it is applied.

In the example, the registered Community design could, therefore, have an impact on the company. The holder of the design could invoke his exclusive right and prevent the company from making the rugs and putting them on the market (the EU internal market, as RCDs offer EU-wide protection).

To protect its business, the company should file an invalidity action before the OHIM. The action could be based on Article 25(1)(b) CDR. It could be argued that the design does not fulfil the requirements of Articles 4–9 CDR. The design could be declared invalid on the grounds of lack of novelty or lack of individual character.

Whether or not the company has a registered design right for its own rug is immaterial.


Now let’s have a look at what the designer and

his company should do.

Why is it important for them to act against the

owner of the registered design?

Well, the protection offered by registered

designs is complete. It gives its holder the

exclusive right to use the design. Therefore,

the registered design in this example could

have an impact on the company. The holder of

the design could invoke his exclusive right and

prevent the company from making these rugs

and putting them on the market.

The company could act by filing an invalidity

action under Article 25(1)(b) CDR.


Slide 164Disclosure

The provisions of the Community Design Regulation do not specify the kind of evidence that invalidity applicants have to furnish. They are free to choose the evidence that they consider useful. The evidence presented must be considered in its entirety. Even if some of the elements may be insufficient in themselves to demonstrate disclosure of a prior design, they can still be considered in combination with other documents or information.

The evidence presented includes a photograph from the company’s catalogue with the product description ‘Balls Rug (Multi) Felt Balls’. A rug of the type illustrated in the catalogue can be seen on the floor of the exhibition stall. These documents are not dated. This could be a problem when it comes to determining whether or not the design was disclosed prior to the filing date of the registered design.

However, there is another piece of evidence, namely the invoice of 24 July 2007. This document is prior to the filing date of the registered design and has a similar product description to that used in the catalogue. In addition, the size indicated corresponds to the proportions (140 x 200) of the rectangular rug depicted in the photographs from the catalogue and of the exhibition stall.

Considering the evidence as a whole, it can be concluded that the design was disclosed before the filing date of the registered design and that it therefore constitutes a prior design.

The invoice dated 5 November 2007, which is after the filing date of the registered design, has no evidential value in relation to the time of disclosure.


The next question is, was the prior design

disclosed? To answer this question, it is

necessary to go over the facts and evidence

presented by the applicant in the invalidity

proceedings.

The evidence consists of two photographs

without dates, one from the catalogue and

one from the exhibition stall. Two invoices

were also presented, one dated 24 July 2007

and the other 5 November 2007.

Is this evidence sufficient to prove disclosure of

the prior design? Can all the evidence presented

be taken into account?

The two photographs are not dated. This could

be a problem when it comes to determining

whether or not the design was disclosed prior

to the filing date of the registered design.

However, there is another piece of evidence

which is dated, and that is the invoice of

24 July 2007. This date is prior to the filing

date of the registered design and the invoice

contains a similar product description to that

used in the catalogue. The size indicated in the

invoice corresponds to the proportions of the

rectangular rug shown in the two photographs.

Considering the evidence as a whole, we can

conclude that the design was disclosed before

the filing date of the registered design and that

it therefore constitutes a prior design.

The invoice dated 5 November 2007, which is

after the filing date of the registered design,

has no evidential value in relation to the time of

disclosure.


Slide 165Which of these grounds for invalidity could be applied?

Lack of noveltyIn this example, the rugs clearly differ in their composition. The prior design is arranged in rows, whereas the contested registered design shows a concentric arrangement. This difference is not merely an immaterial detail. Therefore, the two designs are not identical. The contested design does not lack novelty.

Lack of individual characterWhen determining lack of individual character, the relevant question is whether or not the registered design produces a different overall impression on the informed user, taking into account the designer’s degree of freedom in developing the design.

The following slides will explain who should be considered as being the informed user in this case, and what the designer’s degree of freedom is.


The next question relates to which of the

grounds for invalidity could be applied: lack of

novelty or lack of individual character?

For there to be a lack of novelty in the later

design, the designs must be identical, or the

differences between them immaterial. In this

case, the arrangement of the felt balls in the

two rugs is different, so there is no lack of

novelty.

When assessing lack of individual character

in the later design, one must ask whether or

not the registered design produces a different

overall impression on the informed user, taking

into account the designer’s degree of freedom.

But who exactly is the informed user?


Slide 166The informed user and the designer’s degree of freedom

The informed user in this case is someone who habitually purchases rugs, puts them to their intended use and informs himself about the rugs available on the market by visiting furniture stores and browsing the internet and relevant catalogues.

The designer’s degree of freedom in relation to rugs is almost unlimited. In order to fulfil their purpose, rugs have to be reasonably flat. This is the only limit to the freedom of the designer. In all other aspects, the designer’s freedom is very broad, particularly in relation to the colours, shapes and materials that can be used.


According to the Court of Justice, the informed

user is neither a designer nor a technical expert,

but instead is situated somewhere inbetween.

In this example, the informed user can be

described as someone who habitually purchases

rugs, puts them to their intended use and has a

knowledge of the rugs available on the market.

The degree of freedom of rug designers is

limited only in that rugs must be reasonably

flat. Apart from that they have almost

unlimited freedom.


Slide 167Overall impression

The two designs show substantial similarities but also one significant difference.

The contested design and the prior design both show a rug made from a multitude of small, coloured felt balls, with a random distribution of the different colours. The difference lies in the arrangement of the balls. In the contested design, the balls are arranged concentrically and in the prior design they are arranged in rows.

Taking into account the almost unlimited freedom of the designer in relation to rugs, the difference in the particular arrangement of the balls has only a minor impact on the overall impression produced by the designs. Moreover, the informed user will be aware that the different arrangements are the result of the differences in shape. A rectangular shape can be obtained only by arranging the balls in rows, whereas a concentric arrangement will always result in a circular shape.

The contested design therefore lacks individual character within the meaning of Article 6 CDR. It will be declared invalid.


Do the two designs produce the same overall

impression on the informed user?

The rugs are similar in that they are made

from a multitude of small balls, the balls are

coloured and made of felt and there is random

distribution of the different colours.

The main difference is that in the prior design

the balls are arranged in rows, while in the

registered design they are in a concentric

arrangement.

The impact of the different arrangements is

minor.

We can therefore conclude that the registered

design lacks distinctive character, for which

reason it will be declared invalid.


Slide 168Further reading

This slide lists resources which may be of further interest.


That brings us to the end of this exercise on

designs.


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Impressum

Published by European Patent OfficeMunich© EPO 2014ISBN 978-3-89605-127-1

Responsible for content European Patent Academy and OHIM

Authors:Thomas Bereuter Falk Giemsa Robert HarrisonEva HopperAnu Idicula Jessica Lewis Sérgio Maravilhas LopesClara de Schryver Anna Yotova

Final editingEPO Language Service

Concept and co-ordination European Patent Academy

Design EPO Graphic Design Munich

Photos Cover: Thinkstock

The IP Teaching Kit is a product of the European Patent Academy and the OHIM.

It can be downloaded free of charge from the EPO website at www.epo.org/teaching-kit.

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