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Intellectual Property Law

Sven Jacobs
Associate
Norton Rose Fulbright (Germany) LLP
8. 9.12.2016

Patents

OVERVIEW

Senate of Venice, 1474:


"Any person in this city who makes any new and ingenious contrivance,
not made heretofore in our dominion, shall, as soon as it is perfected so
that it can be used and exercised, give notice of the same to our State
Judicial Office, it being forbidden up to 10 years for any other person in
any territory of ours to make a contrivance in the form and resemblance
thereof".

Optional

An early English patent issued in 1617

An early German patent issued on July 2, 1977

What is a patent?
A patent is a legal title granting its holder
the right to prevent third parties from
commercially using an invention without
authorisation.

In return for this protection, the holder


has to disclose the invention to the
public.
Protection is granted for a limited period,
generally 20 years for a specific
geographic area

Structure of the description


Prior art
Teapot with one spout
Drawback of prior art
Time-consuming
Problem to solve
Reduce filling time
Solution
Provide a second spout
Advantage of the invention
The time needed to fill multiple
cups is reduced

Filing rates at selected patent offices

Where to apply for a patent


National patent offices
National patent valid only in the country where it is granted
Non-residents can also apply for a patent
One year of "priority" for subsequent applications
European Patent Office

A European patent is equivalent to national patents in the


countries where it is granted (the applicant chooses the countries)

Where to apply for a patent


Via the Patent Cooperation Treaty
Just one application for up to 141 countries
After the initial application phase, the international application
leads to multiple national patent examination procedures
Decisions with cost implications can be delayed until 30-31
months after filing (e.g. choice of countries to file in)
There is no such thing as an international patent!

PROTECTED SUBJECT

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Protected Subject
Patents are granted in all fields of technology for any inventions,
provided that they are new, involve an inventive step and are
susceptible of industrial application.
Contrary to copyright, which comes into existence without any
formalities by the mere fact of creation, an invention is granted a
patent only upon application and registration in the official register
kept with the patent office.

Patent protection is limited in time (usually a patent is granted for


20 years), and the full period only applies if the patent owner has
timely paid the renewal fees.

Protected Subject
Sec. 1 subs. 1 Patent Act:
Patents shall be granted for inventions in any technical field if they are
novel, involve an inventive step and are susceptible of industrial
application.

Protected Subject
Inventions in any technical field
Pursuant sec. 1 subs. 3 Patent Act, in particular, the following shall not be
regarded as inventions within the terms of subsection (1):
1. discoveries, scientific theories and;
2. aesthetic creations; mathematical methods

3. schemes, rules and methods for performing mental acts, playing


games or doing business as well as programs for computers;
4. presentations of information.

Protected Subject
Sec. 1a subs. 1 Patent Act:
The human body at its various stages of formation and development,
including germ cells, and the simple discovery of one of its elements,
including the sequence or partial sequence of a gene, cannot constitute a
patentable invention.
Sec. 1a subs. 2 Patent Act:

An element isolated from the human body or otherwise produced by


means of a technical process, including the sequence or partial
sequence of a gene, may constitute a patentable invention even if the
structure of that element is identical to that of a natural element.

Protected Subject
Sec. 2 subs. 1 Patent Act:
Patents shall not be granted for inventions if their commercial exploitation
is contrary to public order or morality; however, such a contravention
may not be deduced simply from the fact that the exploitation is prohibited
by law or administrative regulation.

Protected Subject
Sec. 2 subs. 2 Patent Act:
Patents shall especially not be granted for
1. processes for cloning human beings;

2. processes for modifying the genetic identity of the germ line of human
beings;
3. uses of human embryos for industrial or commercial purposes;

4. processes for modifying the genetic identity of animals, which are


likely to cause said animals suffering without any substantial medical
benefit to man or said animal, nor shall patents be granted for animals
resulting from such processes.

SUBSTANTIVE
REQUIREMENTS
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Case Study Software Patent

Substantive Requirements
Sec. 1 subs. 1 Patent Act:
Patents shall be granted for inventions in any technical field if they are
novel, involve an inventive step and are susceptible of industrial
application.

Substantive Requirements
Sec. 5 Patent Act:
An invention shall be deemed to be susceptible of industrial application
if its subject matter can be produced or used in any industrial field,
including agriculture.

Substantive Requirements
Sec. 3 subs. 1 Patent Act:
An invention shall be considered to be novel if it does not form part of the
state of the art.

The state of the art includes all knowledge made available to the public
by written or oral description, by use or by any other manner before the
date relevant for the priority of the application.

Substantive Requirements
Sec. 4 Patent Act:
An invention shall be deemed to involve an inventive step if it is not
obvious to a person skilled in the art from the state of the art.

Substantive Requirements
An invention shall be sufficiently inventive i.e., non-obvious in
order to be patented. Therefore the "problem-solution approach" is
applied.
The approach consists in:

identifying the closest prior art, the most relevant prior art;
determining the objective technical problem, that is, determining,
in the view of the closest prior art, the technical problem which the
claimed invention addresses and successfully solves; and
examining whether or not the claimed solution to the objective
technical problem is obvious for the skilled person in view of the
state of the art in general.

Case Study Smartphone Presentation

FORMAL REQUIREMENTS

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Formal Requirements
Sec. 6 Patent Act:
The right to a patent shall belong to the inventor or his successor in title.
If two or more persons have jointly made an invention, the right to the
patent shall belong to them jointly.
If a number of persons have made an invention independently of each
other, the right shall belong to that person who first files an application for
the invention with the Patent Office.

Formal Requirements
Sec. 34 subs. 3 Patent Act (proceedings before the Patent Office):
An application shall contain:
1. the name of the applicant;

2. a request for the grant of a patent, in which the invention shall be clearly
and concisely designated;
3. one or more claims defining the subject for which protection is sought;

4. a description of the invention;


5. the drawings referred to in the claims or the description.

SCOPE

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Scope
Sec. 14 Patent Act:
The scope of protection conferred by a patent or a patent application shall
be determined by the patent claims.

Nevertheless, the description and drawings shall have to be consulted


when interpreting the claims.

Scope
Sec. 9 Patent Act:
A patent shall have the effect that the patentee alone shall be authorized
to use the patented invention within the applicable laws.
A third party not having the consent of the patentee shall be
prohibited

1. from making, offering, putting on the market or using a product which is


the subject matter of the patent, or from importing or possessing said
product for such purposes;

Scope
2. from using a process which is the subject matter of the patent, or,
when said third party knows or it is obvious from the circumstances that
use of the process without the consent of the patentee is prohibited, from
offering the process for use within the territory to which this Act applies;
3. from offering, putting on the market or using or importing or possessing
for such purposes the product produced directly by a process which is
the subject matter of the patent.

Scope
Sec. 10 Patent Act:
(1) A patent shall have the further effect that any third party not having the
consent of the patentee shall be prohibited from offering or supplying
within the territory to which this Act applies to any other persons, other
than such persons authorized to use the patented invention, means
relating to an essential element of said invention for use of the
invention within the territory to which this Act applies, if said third party
knows or it is obvious from the circumstances that such means are
suitable and intended for use of the invention.

Scope
Sec. 11 Patent Act:
The effects of a patent shall not extend to:
1. acts done privately for non-commercial purposes;

2. acts done for experimental purposes relating to the subject matter of the
patented invention;

INFRINGEMENT

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Infringement Legal Recourse


Cease and desist (sec. 139 subs. 1 Patent Act)
Damages (sec. 139 subs. 2 Patent Act)
Information (sec. 140b Patent Act)

EUROPEAN PATENT OFFICE


(EPO) & EUROPEAN PATENT
CONVENTION (EPC)
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The European Patent Convention


The European Patent Convention (EPC)
provides the legal framework for the granting of European patents
via a centralised procedure
establishes the European Patent Organisation
1973 Diplomatic Conference in Munich signature of the EPC by 16
countries
1977 Entry into force of the EPC in 7 countries -

marked as follows

Structure of the European Patent Organisation


European Patent Organisation

European Patent Office

Administrative Council

The executive body

The legislative body

responsible for examining European


patent applications

made up of delegates
from the member states
supervises the activities
of the Office
has a specific legislative
function

38 member states

Albania Austria Belgium Bulgaria Croatia


Cyprus Czech Republic Denmark
Estonia Finland France Germany
Greece Hungary Iceland Ireland
Italy Latvia Liechtenstein Lithuania
Luxembourg Former Yugoslav Republic of
Macedonia Malta
Monaco Netherlands
Norway
Poland Portugal Romania
San Marino Serbia Slovakia Slovenia Spain
Sweden Switzerland Turkey United Kingdom

Locations
The EPO has offices at five
different locations (Brussels,
The Hague, Berlin, Munich,
Vienna).
Its headquarters are in Munich.

Role in the European patent system


Provide patent protection in up to 38 European countries based on
a single application in one of the three official languages (German,
English, French)
European patent applications can be filed:
direct with the EPO
via the national patent offices of the contracting states
based on an international (PCT) application
Also responsible for
limitation and revocation proceedings by patentees
opposition proceedings by third parties
appeal proceedings before the Boards of Appeal

What is patentable (EPC)?


To be patentable, an invention must:

have a technical character (e.g. comprise a product, process or


apparatus)
be new
involve an inventive step
be industrially applicable
Some innovations are not patentable under the EPC:
for example, mathematical methods or formulae, computer
programs and business methods are as such not regarded as
inventions
new plant or animal varieties and inventions whose commercial
exploitation would be contrary to "ordre public" or morality (e.g.
the cloning of human life) are examples of inventions excluded
from patentability

Right of priority
First, once an inventor has duly filed an application for a patent in
one state, he enjoys what is called a priority right" during the
following 12 months.
This means that if subsequently to his application for a patent in
country A, the inventor files another patent application for the
same invention in country B, then this second application is
deemed to have been occurred not at the actual date of filing in
country B, but at the date when the patent was initially filed in
country A.
This saving" of the initial date leaves the inventor time for a
translation of his application. It also means that as regards the
question whether an invention is new" and the relevant state of
the art" at the date of filing is judged according to the earlier and
not the later filing date.

Right of priority
Second, in order to avoid that inventors have to file with each
single national patent office separately, an international filing
procedure has been provided for under the Patent Cooperation
Treaty (PCT).
Here, one centralized filing with the World Intellectual Property
Organization (WIPO) - either directly in Geneva, or via a national
Patent Office - is sufficient. WIPO will then forward the central
application to the national Patent Offices which the applicant has
designated in his application.
The application is the processed independently in each of the
designated Patent Offices according to each Patent Office's own
rules. It should be noted, however, that in this respect international
legislation provides at least some form of harmonization regarding
the procedural aspect of the applying for and granting of patents.
Note that the European Patent Office can also serve as both a
receiving and a designated office (so-called Euro-PCT
application).

The patent procedure at the EPO

Application

Search
report

Publication
of application

Publication
of grant

18 months
Withdraw?
Approx. 4-5 years

9 months

Opposition
period
expires

Overview of European patent grant procedure (I)

Applicant

EPO

European
patent
application

Filing and
formalities
examination

Search and search


report together
with preliminary
opinion on patentability

Refusal or
withdrawal
of application

Validation in
designated
states

Substantive
examination

Grant of
European
patent

Publication of application and search report


Public
domain

Online access to application file and


legal status information
Observations by third parties possible

Publication
of patent
specification

Overview of European patent grant procedure (II)

Applicant

EPO

Refusal of
application

Substantive
examination

Grant of
European
patent

Limitation or
revocation
proceedings

Opposition
proceedings

Public
domain

Opposition by
third parties
possible

Appeal
proceedings

Cost of a national patent application: Germany

Patent granted!
Patent
Invention attorney
EUR 1 000
to EUR 4 000

Apply for
Annual fees
patent
4
Examination Year 3
EUR 60

EUR 350

EUR 70 EUR 70 EUR 90

Total: EUR 1 700 - EUR 5 100


(depending on complexity of patent and extent of applicant's preparation)

Cost of a European patent up to grant


Protection in (e.g.):
EUR 3 000 translations*
Germany
United Kingdom
France
Italy
Spain
Switzerland

EUR 10 000 patent attorney fees*

EUR 5 000 patent office fees*

German
patent

European
patent

* Estimated cost. Actual cost depends very much on the specifics of the individual case.

How patents are used


Protecting products and processes
Licensing
Cross-licensing
Blocking competitors
Building reputation

Share of patents, %

The value of European patents

Patent value

Patent management
Patent strategy
Offensive/defensive
Internationalisation
Kind of exploitation: licensing or own use
Patent information

Keep abreast of technology


Avoid infringing patents
Understand the competitive landscape

Patent management
Communication
Compile convincing evidence that your patents are valuable
Inform investors and banks, clients and prospective employees
Maintenance
Pay renewal fees, observe deadlines
Strengthen important patents and get rid of ones with no value

What not to do
No publication prior to filing
e.g. no article, press release, conference
presentation/poster/proceedings or blog entry
No sale of products incorporating the invention prior to
filing

No lecture or presentation prior to filing


except under a non-disclosure agreement (NDA)

Seek professional advice soon!

File before others do!

Unified Patent Court

Advantages of Unitary Patent and UPC


"European" wide enforcement
Damages for a big market
Cheaper maintenance fees if patent is upheld in more than 4
countries Less administration

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Disadvantages of Unitary Patent and UPC


"European" wide revocation possible
Inexperienced judges
Insecurity by new system
More costs for maintenance if less than four countries are of
interest Flexibility by dropping countries Lose advantages of
patentee friendly national systems like bifurcation and quick p.i.s
in Germany

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Factors for individual decision to be taken


Fear of "one stroke" invalidation action?
Possibility of reliable quick injunction or rather broad coverage
and big damages?

Safe costs of prosecution, reduce administrative work?

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Contact Information
Sven Jacobs | Associate
Rechtsanwalt
Norton Rose Fulbright LLP
Taunustor 1 (TaunusTurm), 60310 Frankfurt, Germany
Tel +49 69 505096 416 | Mob +49 173 3404587 | Fax +49 69
505096 100
sven.jacobs@nortonrosefulbright.com

NORTON ROSE FULBRIGHT

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