Practical Aspects of IP Arbitration: Improving the negotiating position Olav Jaeger September 14, 2009

Practical Aspects of IP Arbitration:Improving the negotiating position

Olav Jaeger

September 14, 2009

September 09 2

1. Background

2. Types of intellectual property rights in Europe

3. Application strategies

“The art of war teaches us to rely not on the likelihood of the enemy's not coming, but on our own readiness to receive him; not on the chance of his not attacking, but rather on the fact that we have made our position unassailable.”

Sun Tzu

September 09 3

Background

■ Rights granted by IP

■ a patent provides the right to exclude any third party from making, using, selling and offering for sale

■ a trademark confers on its proprietor an exclusive right to use the trade mark and to prevent third parties to use, without consent, the same or a similar mark for identical or similar goods and/or services trademark

■ a design provides a exclusive right to use the design concerned and to prevent any third party from using it

■ The term “use” includes making, offering for sale and selling

September 09 4

IntellectualPropertyTypes

■ There are different kinds of national and European intellectual property rights

■ National IP rights■ Patents■ Utility model■ Trademarks■ Design

■ European Patent

■ European Community rights ■ Trademark■ Design

September 09 5


■ National intellectual property rights

■ Obtained through national Offices■ filing language: national language or any (with translation filed later

on), depending on IP type

■ Examination depending on IP type and national law

■ Duration depending on IP right (subject to extension fees) and national law

■ Patent: up to 20 years■ Utility model: up to 10 years■ Trademark: infinite■ Design: up to 25 years

■ Protection only in the respective national state

September 09 6


■ European Patent

■ Obtained through EPO■ filing language: DE, EN, FR or any (with translation necessary later

on)

■ Examination on patentability

■ Validation in member states of the EPO

■ Duration (subject to renewal fees): up to 20 years

■ Protection only in validated member states

September 09 7


■ Community intellectual property rights

■ Obtained through OAMI■ filing language: DE, EN, ES, FR, IT

■ Examination depending on type and council regulation

■ Duration depending on IP right (subject to renewal fees) and council regulation

■ Community trademark: infinite

■ Community design: up to 25 years

■ Protection within the European Community

September 09 8


■ National patent■ protection in

national state

■ European Patent■ protection in

validated member states

■ Community rights■ protection within

the EC

September 09 9


■ Situations for many Chinese companies regarding European IP rights:

- no IP rights at all

o some foreign IP rights (e.g. some CN patent s or patent applications pending)

o some European IP rights (e.g. some EP patent applications pending

☺ many European IP rights (e.g. different IP types, many EP and national patents as well as patent applications pending)

September 09 10

ApplicationStrategies

September 09 11


■ Possible strategies to improve situation related to patents

■ WO-Applications

+ filing in CN possible+ broad range of countries including EP+ most relevant cost decision can be postponed- long duration until grant

■ Costsappr.: 4500 € (application with 20 pages, 10 claims with EPO as ISA)

September 09 12



■ WO-Application duration

month30,3112 22

national applications, e.g. US, DE, FR

WO subsequent application

WO application

regional applications, e.g. EP

national application

September 09 13



■ EP-Applications

+ filing in CN possible but English translation required before obtaining search report

+ two stage granting procedure: search - examination+ protection in validated members states, can be postponed until

granto faster than WO-application, but often slower than national

procedure

■ Costsappr.: 22.000 € to 28.000 € ( 6 validated countries )

September 09 14



■ EP-Applications duration

grant18 24

EP subsequent application validated patentsin member states

WO application

12

national application

EP application

31

September 09 15



■ National applications

+ normally the fastest way to get a patent+ relatively low administrative fees- national language required- protection in only one country

■ Costsdepending on country, appr.: 2000 – 7000 € (application with 20 pages, 10 claims)

■ recommended measures for improving portfolio situation in Europe

■ WO / EP application for future technologies■ identify and protect key technology■ long duration is not important

■ national applications in key customer markets■ mostly well established system for litigation■ acknowledged quality of examination (DE)

■ utility models where possible■ fast, cheap, but unexamined■ good for counterclaim

September 09 16


September 09 17


■ Possible strategies to improve situation related to other IP rights

■ National designs+ fast and cheap registered IP right- not examined- protection in only one country■ Costs

depending on country, appr.: 500 – 2000 €

■ Community designs+ very fast registered IP right (24 – 48 h to registration)+ every product within the EC is unregistered EC design+ protection within the EC- not examined■ Costs


September 09 18


■ Possible strategies to improve situation related to other IP rights

■ National trademarks+ cheap registered IP right- examination depending on national law- protection in only one country■ Costs


■ Community trademarks+ examination on absolute grounds for refusal+ protection within the EC■ Costs

appr.: 2000 – 5000 €

■ recommended measures for improving portfolio situation in Europe

■ National/Community designs■ identify and protect key designs using Community Designs■ protect key markets with additional national designs■ good in combination with other IP rights

■ National/Community trademarks■ protect products with newly introduced technology■ well established system for litigation■ good in combination with other IP rights

September 09 19


Practical Aspects of IP Arbitration:Improving the negotiating position

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Practical Aspects of IP Arbitration: Improving the negotiating position Olav Jaeger September 14, 2009