EACCNJ

European Union

IP Forum

Mark DeLucaPepper Hamilton LLP

September 27, 2012

Today’s Presentation – Part I

• Mark DeLucaIntellectual Property

Overview of US Patents

Discussion of Patentabiity in US

Discussion of US System

• Nick BassilEuropean Patent Landscape

Patentabilty

Costs

Enforcement in Europe

• Nick Bassil and Mark DeLucaTips going from US to Europe

Observations regarding some notable differences

• Questions and Break

Today’s Presentation – Part II

• Questions from Part I

• Nick BassilProposed EU Unitary Patent and Unified Patent Court

• Mark DeLucaBrief overview of US Trademarks and Copyrights

• Nick Bassil European Trademark and Copyright landscape

• Questions

What is Intellectual Property?

Patents, Trademarks & Copyrights, Trade Secrets/Confidential Info

Patents: Inventions, i.e. compositions, machines and methodsLimited time – 20 years from filing application Examined for patentability before granted

Trademarks:Brand Name – Trademarks and Service MarksFor as long as they are in useExamined before granted - some rights attach upon use

Copyrights:Works of authorship fixed in a tangible medium of expressionLimited time – generally life of author plus years after deathRegistration – some rights attach prior to registration

Overview of U.S. Patents

US Standards for Patentability

Eligible subject matter

Novelty

Non-Obviousness

Specification requirements

Claims

Duty of candor

US Application Process

US Post Issuance proceedings

US Costs

Enforcement in US

US Standards for patentability

• Eligible subject matter − compositions, articles of manufacture, machines and methods

− recent issues include business methods, diagnostic methods, software

• Novelty − U.S. switching to first to file

− grace period and derivation

• Non-obviousness − based upon what was known before

− prima facie case• recent decisions stress teaching away or unexpected results

• lead compound as closest prior art

• other attacks and secondary considerations available

US Standards for patentability cont’d

• Specification requirements − enablement: must teach how to practice the claimed invention

− written description: must show possession of invention at filing

− best mode: must disclose best mode contemplated at filing

• Claims − define the scope and contents of exclusive rights

− clear and definite requirement

− interpretation issues

• Duty of candor− must disclose all information material to patentability

Additional aspects of US system

• Examination proceedings− First action cannot be final rejection

− Final rejections can be appealed or continuing prosecution available

− Appeals to Board first, then CAFC; civil litigation route available

• US Post Issuance proceedings− many new procedures added including oppositions

• estoppel

• US costs− currently being re-set; costs going up, in many cases significantly

• US enforcement− jursidiction and venue

Differences from US Perspective

• Patentability Standards are comparable but different

• Summons to oral proceedings

• Deadlines for continuations and divisionals

• Oppositions not unusual

• Country by country validation

• Enforcement strategies

Overview of U.S. Trademarks

• Trademark – Trademarks and Service Marks• Brand• Word, phrase, symbol, and/or design

− intended to provide consumer with ability to identify and distinguish the source of the goods of one party from those of others.

• Rights based upon Federal registration, State registration and Use with no registrations

• Federal registration for Mark is limited to specific classes of goods and services

• Examination for novelty and likelihood of confusion• Duration not limited as long as in use• Enforcement based upon likelihood of confusion

Overview of U.S. Copyrights

• Copyright - Works of authorship that have been fixed to a tangible medium

• Registration not required for rights to attach but advantages to registration.

• No examination as to novelty

• Duration for limited period