Published on September 24, 2007
Slide1: Patents in the Electronic (and IT) Industries Olivier Sacroug European Patent Attorney Katzarov SA Slide2: What is a patent? 'Contract' with the society You disclose your invention to the public and, as a counter-part, the government grants you with a 20 years monopoly Patents are national/regional no effects outside their jurisdiction Right to exclude others from making, using, offering for sale, selling, importing the invention Patents do not provide you with the right to make, use, offer for sale, sell or import your own invention Patentee must enforce the patent Slide3: Why should I apply for a patent? Immediate value Grants you with a property right on your inventions Gives you a monopoly on these inventions Protects your developments, Randamp;D investments Licensing opportunities Slide4: Why should I apply for a patent? (2) Indirect value To help convincing investors / partners To strengthen your position in negotiations with partners / competitors Slide5: Why are patents particularly important in the Electronic and IT industries Copying / reverse engineering is relatively easy Very active and 'aggressive' environment Slide6: Why should I not file patent application in the Electronic and IT industries Business is often faster than patent offices Slide7: WIPO Statistics Slide8: Source: Trilateral Statistical Report, 2005 edition; jointly produced by the EPO, JPO and USPTO; Edited by the JPO, 2006. Slide9: What can I protect with a patent? Almost any new and inventive technical solution Components (filters, connectors, ...) Composition of matter Machines (machine tools, electronic equipment,...) Manufacturing methods Services (e.g. over telecommunication networks) Software ?! Slide10: Example 1: connector Slide11: Example 2: electric filter Slide12: Example 3: comp. alignment Slide13: Example 4: inspection module Slide14: Example 5: billing process Slide15: Example 6: single sign-on process Slide16: How should I proceed? Start early in the development process Identify the elements of your solution / idea that bring a real commercial advantage Depending on the complexity of the project, be ready to file more than one patent application Slide17: Patents are only delivered for NEW inventions DO NOT DISCLOSE your invention before you filed a patent application Slide18: What is considered as a disclosure? publication article in a journal or a newspaper flyer abstract pre-print website, blogs, Internet postings letters, fax, emails discussion with friends public use offering for sale Slide19: What is NOT considered as a disclosure? discussions inside the company, in a lab, ... letters, faxes, emails, discussions , seminars if they are explicitly covered by a NON-DISCLOSURE AGREEMENT Slide20: In case of a disclosure by the inventor Grace period USA, Canada: 1 year Eurasia: 6 months Europe, Japan, India and most countries: 0 days Slide21: Other forms of IP protection Petty patents (utility models, modèles d’utilité, Gebrauchsmuster, etc.): usually more limited in time (5-15 years) Designs: protects only the visual aspect Topography: protects a specific design of an integrated circuit Trademarks Slide22: Where should I apply for a patent? The legal effects of a patent effects are limited to a country or a region There are no such things as 'international patents' Slide23: Where should I protect my invention? Own country of development / production Main competitors’ countries of production Main markets Slide24: Provisional patent application Short deadline (before a fair, etc.) Limited financial resources Very early stage, details of solution unclear Extend the life of the patent (pharma) MUST be transformed within 12 months Slide25: International PCT application Covers most countries Postpone strategic decisions (30 months) Postpone major costs Search report and possible examination MUST be transformed into regional/national patent applications Slide26: Direct National/Regional filings Cost effective No modification of the geographical coverage possible after 12 months from the priority date (date of first filing): requires a well-defined strategy from the start Slide27: Source: Trilateral Statistical Report, 2005 edition; jointly produced by the EPO, JPO and USPTO; Edited by the JPO, 2006. Slide28: Adapted geographical coverage: essential A single patent covering one country can be as efficient as several patents covering an entire continent If neither the competitors’ countries nor the markets are covered : no big use Slide29: Questions? Slide30: Olivier Sacroug Katzarov SA European Patent andamp; Trademark Attorneys Geneva and Basel [email protected] Tel: +41 22 342 66 30 Fax: +41 22 342 66 15 www.katzarov.com Thank You!