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EACCNJ European Union IP Forum Mark DeLuca Pepper Hamilton LLP September 27, 2012.

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Presentation on theme: "EACCNJ European Union IP Forum Mark DeLuca Pepper Hamilton LLP September 27, 2012."— Presentation transcript:

1 EACCNJ European Union IP Forum Mark DeLuca Pepper Hamilton LLP September 27, 2012

2 Today’s Presentation – Part I Mark DeLuca Intellectual Property Overview of US Patents Discussion of Patentabiity in US Discussion of US System Nick Bassil European Patent Landscape Patentabilty Costs Enforcement in Europe Nick Bassil and Mark DeLuca Tips going from US to Europe Observations regarding some notable differences Questions and Break

3 Today’s Presentation – Part II Questions from Part I Nick Bassil Proposed EU Unitary Patent and Unified Patent Court Mark DeLuca Brief overview of US Trademarks and Copyrights Nick Bassil European Trademark and Copyright landscape Questions

4 What is Intellectual Property? Patents, Trademarks & Copyrights, Trade Secrets/Confidential Info Patents: Inventions, i.e. compositions, machines and methods Limited time – 20 years from filing application Examined for patentability before granted Trademarks: Brand Name – Trademarks and Service Marks For as long as they are in use Examined before granted - some rights attach upon use Copyrights: Works of authorship fixed in a tangible medium of expression Limited time – generally life of author plus years after death Registration – some rights attach prior to registration

5 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

6 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

7 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

8 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

9 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

10 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

11 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

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