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Presentation on theme: "WIPO WORKSHOP ON INTELLECTUAL PROPERTY FOR BUSINESS FOR SMALL AND MEDIUM-SIZED ENTERPRISES (SMES) Workshop in Dar-es-Salaam, May 10 and 11 2005 Dipl.-Ing."— Presentation transcript:

1 WIPO WORKSHOP ON INTELLECTUAL PROPERTY FOR BUSINESS FOR SMALL AND MEDIUM-SIZED ENTERPRISES (SMES) Workshop in Dar-es-Salaam, May 10 and Dipl.-Ing. Volker Plogmann Managing Director Patent and Trademark Department Wilhelm Karmann GmbH Full Service Vehicle Supplier, Osnabrück, Germany Intellectual Property Rights (IPRs) For the success of small and medium-size enterprises innovative products as a result of purposeful research and development activities are of high significance as well as the strategic of Industrial Property Rights (IPRs). Patents ensure the innovative competitive advantage. Patents are the most important instrument of IPR for technology enterprises. Patents serve the conversion of company targets. Many innovative and successful enterprises therefore applies: Patent strategy is enterprise strategy. On the average half of the enterprise value consists of imaterial economic goods which are financially not considered (relating to the balance). Expert knowledge is required for purposeful handling of imaterial economic goods. The focusing on the range of the management of Intellectual property rights is part of patent strategy. Volker Plogmann

2 Why Intellectual Property Rights ?
Intellectual Property / Immaterial Goods No „physical entity“ („idea“) Realizable / easy to copy/multiply Value when multiplied? (rises/falls) Aggregate Value added (by whom?) Amendments possible control? Commercial Use of IPRs A first aspect of using IPRs commercially is that they give their owners the possibility to protect their own business, namely to prevent third parties from copying and using, respectively, the technology, in case of patents as an example, which is subject to such IPRs. Cooperation with other parties furthermore becomes easier if the technology of one of the cooperation partners, at least, is protected by IPRs, since in this case it is much easier to exchange certain informations with cooperation partners without the risk of a not permitted use of the technology and secret know-how, respectively, by the other cooperation partner(s). Volker Plogmann

3 Why Intellectual Property Rights ?
Invention and competitive advantage keeping secret (method / product) ? Easy to copy/analyze (Know-How) ? General Goal of IP System Support of Innovation Providing of Knowledge (Publication) “Legal Protection” as renumeration for publication of knowledge Also, the use of IPRs in mergers and acquisitions should not be under-esteemed, the valuation of intangible assets leading in many instances to a much higher value of a company or part of an enterprise to be balanced in order to get certain shares in joint ventures etc. Joint results of joint R&D can easier be controlled in cooperation with other parties, and joint patent ownership, as an example, in this regard can help to avoid antitrust problems. Volker Plogmann

4 Kinds of Intellectual Property Rights
Registered IPRs Un-registered IPRs Technical IPRs Non-technical IPRs Kinds of IPRs In order to illustrate to the audience the types of IPRs which can be licensed, reference will subsequently be made to the different types of IPRs in the widest possible sense. Any advisor participating in licensing should be guided by means of a type of check list to investigate the structure and possible scope of license arrangements. Volker Plogmann

5 Registered IPRs Technical IPRs Non-technical IPRs Patents
Utility models Topographic designs Plant varieties Non-technical IPRs Registered Trademarks Designs Registered IPRs Typical IPRs are those in a narrower sense, namely registered IPRs. These rights are the easiest basis of someone wishing to license out or in, though the world of licensible IPRs certainly is not restricted to such rights. Volker Plogmann

6 Patents / Utility Models
Subject matter Technical teaching Products Processes (only patent) Uses (only patent) Important Exception: software “as such” Patents A preeminent role among IPRs is enjoyed by patents, which in the present context also cover patent applications. When valuing these it must be borne in mind that even a patent application already represents an economic basis for licensing, although it still fails to provide full exclusive rights. Naturally, in the case of a patent application there is a risk of it subsequently not leading to a patent during examination proceedings because its subject-matter is not considered patentable, i.e. new and inventive, but the risk of a subsequent patent destruction also exists with already granted patents, which can be destroyed during opposition or invalidation proceedings. In the practice of licensing of technology which is subject to patent applications or patents rather seldom there is a significant risk factor deduction in case of patent applications compared with already granted patents. Volker Plogmann

7 Patents / Utility Models
Requirements for registrability Novelty Inventiveness Commercial applicability Patents This is largely the opposite to what happens when according e.g. to German practice compensation for employees' inventions is calculated, where a 50 % risk deduction up to patent grant has been adopted. A transfer of this rule to licensing has not generally been observed, though certain reductions during the application period of an invention which is subject to a patent application might be justified. Utility Models For the purpose of the present paper utility models, wherever they exist because of local legislation, can be looked upon as "petty patents". Fundamentally they are exclusive rights substantiating claims to cease and desist and for damages. Since the right of the utility model owner insofar are no different from those of the patentee, they lead to the corresponding consequences for licensing. Volker Plogmann

8 Designs Subject matter Requirements for registrability
Two dimensional patterns Three dimensional configurations Requirements for registrability Novelty Uniqueness Designs Unlike in the case of patents and utility models, designs do not protect technical inventions, but instead creations having an aesthetic uniqueness. It is not a question of whether the particular article represents a work of art or is "attractive" in the aesthetic sense, it is only the uniqueness differentiating a particular design from a generally known shapes, no matter whether it is attractive or not. The protection of the design, unlike that of a patent or utility model, is not an "absolute" protection, but instead only covers the copying of the protected design, a requirement which does not exist with patents and utility models. Subcases of design protection are the protection of typographic characters and the topographies of microeletronic semiconductor products. If the enterprise to be acquired is of such a nature it will be necessary to check such rights. Rights of the aforementioned kind are valuable assets in case of licensing. Volker Plogmann

9 Designs Creation of protection Scope of protection
National deposition/registration International deposition/ registration/The Hague Convention Scope of protection Merely against copying (no protection against independent development of third party! ) Volker Plogmann

10 Trademarks Volker Plogmann Registered Marks
Apart from patents, trademarks constitute extremely valuable IPRs which can be used for licensing in the broadest sense. Marks, namely word and picture marks, but also claims or three-dimensional structures, can assume considerable values, as will be made apparent by the fact that e. g. in 1991 seven marks for alcoholic drinks with which it was possible in the past to obtain an annual turnover of about 235 million US $ were sold by the Canadian firm Seagram for more than 370 million US $ to American Brands, giving an average mark value of more than 50 million US $. Other than in the case of patents, utility models and designs the protection term of trademarks is unlimited. Also for the economic use period it is difficult to give empirical values, because it can range between zero in the case of stock marks and extend to infinity. On e. g. considering Coca Cola, the value of a mark frequently exceeds many times the total value of the remaining assets of the enterprise. Obviously, trademarks are an ideal subject for license agreements, taking duly into consideration the aforementioned aspects. Volker Plogmann

11 Legal Aspects (TRIPS) International Minimum Standards
Copyright, Trademark, Design, ... Patents, Art. 27 to 34 TRIPS: all fields of technology without discrimination novelty, inventiveness, industrial applicability no discrimination as to place of invention or whether products are imported or local WTO Member States (144, as of Jan. 2002) Albania 8 September 2000 Angola 23 November 1996Antigua and Barbuda 1 January 1995 Argentina 1 January 1995 Australia 1 January 1995 Austria 1 January 1995 Bahrain 1 January 1995 Bangladesh 1 January 1995 Barbados 1 January 1995 Belgium 1 January 1995 Belize 1 January 1995 Benin 22 February 1996 Bolivia 12 September 1995 Botswana 31 May 1995 Brazil 1 January 1995 Brunei Darussalam 1 January 1995 Bulgaria 1 December 1996 Burkina Faso 3 June 1995 Burundi 23 July 1995 Cameroon 13 December 1995 Canada 1 January 1995 Central African Republic 31 May 1995 Chad 19 October 1996 Chile 1 January 1995 China 11 December 2001 Colombia 30 April 1995 Congo 27 March 1997 Costa Rica 1 January 1995 Côte d'Ivoire 1 January 1995 Croatia 30 November 2000 Cuba 20 April 1995 Cyprus 30 July 1995 Czech Republic 1 January 1995 Democratic Republic of the Congo 1 January 1997 Denmark 1 January 1995 Djibouti 31 May 1995 Dominica 1 January 1995 Dominican Republic 9 March 1995 Ecuador 21 January 1996 Egypt 30 June 1995 El Salvador 7 May 1995 Estonia 13 November 1999 European Community 1 January Fiji 14 January 1996 Finland 1 January 1995 France 1 January 1995 Gabon 1 January 1995 The Gambia 23 October 1996 Georgia 14 June 2000 Germany 1 January 1995 Ghana 1 January 1995 Greece 1 January 1995 Grenada 22 February 1996 Guatemala 21 July 1995 Guinea Bissau 31 May 1995 Guinea 25 October 1995 Guyana 1 January 1995 Haiti 30 January 1996 Honduras 1 January 1995 Hong Kong, China 1 January 1995 Hungary 1 January 1995 Iceland 1 January 1995 India 1 January 1995 Indonesia 1 January 1995 Ireland 1 January 1995 Israel 21 April 1995 Italy 1 January 1995 Jamaica 9 March 1995 Japan 1 January 1995 Jordan 11 April 2000 Kenya 1 January 1995 Korea, Republic of 1 January 1995 Kuwait 1 January 1995 Kyrgyz Republic 20 December 1998 Latvia 10 February 1999 Lesotho 31 May 1995 Liechtenstein 1 September 1995 Lithuania 31 May 2001 Luxembourg 1 January 1995 Macao, China 1 January 1995 Madagascar 17 November 1995 Malawi 31 May 1995 Malaysia 1 January 1995 Maldives 31 May 1995 Mali 31 May 1995 Malta 1 January 1995 Mauritania 31 May 1995 Mauritius 1 January 1995 Mexico 1 January 1995 Moldova 26 July 2001 Mongolia 29 January 1997 Morocco 1 January 1995 Mozambique 26 August 1995 Myanmar 1 January 1995 Namibia 1 January 1995 Netherlands — For the Kingdom in Europe and for the Netherlands Antilles 1 January 1995 New Zealand 1 January 1995 Nicaragua 3 September 1995 Niger 13 December 1996 Nigeria 1 January 1995 Norway 1 January 1995 Oman 9 November 2000 Pakistan 1 January 1995 Panama 6 September 1997 Papua New Guinea 9 June 1996 Paraguay 1 January 1995 Peru 1 January 1995 Philippines 1 January 1995 Poland 1 July 1995 Portugal 1 January 1995 Qatar 13 January 1996 Romania 1 January 1995 Rwanda 22 May 1996 Saint Kitts and Nevis 21 February 1996 Saint Lucia 1 January 1995 Saint Vincent & the Grenadines 1 January 1995 Senegal 1 January 1995 Separate Customs Territory of Taiwan, Penghu, Kinmen and Matsu 1 January 2002 Sierra Leone 23 July 1995 Singapore 1 January 1995 Slovak Republic 1 January 1995Slovenia 30 July 1995 Solomon Islands 26 July 1996 South Africa 1 January 1995 Spain 1 January 1995 Sri Lanka 1 January 1995 Suriname 1 January 1995 Swaziland 1 January 1995 Sweden 1 January 1995 Switzerland 1 July 1995 Tanzania 1 January 1995 Thailand 1 January 1995 Togo 31 May 1995 Trinidad and Tobago 1 March 1995 Tunisia 29 March 1995 Turkey 26 March 1995 Uganda 1 January 1995 United Arab Emirates 10 April 1996 United Kingdom 1 January 1995 United States of America 1 January 1995 Uruguay 1 January 1995 Venezuela 1 January 1995 Zambia 1 January 1995 Zimbabwe 5 March 1995 Observer governments Algeria Andorra Armenia Azerbaijan Bahamas Belarus Bhutan Bosnia and Herzegovina Cambodia Cape Verde Ethiopia Former Yugoslav Republic of Macedonia Holy See (Vatican) Kazakstan Lao People's Democratic Republic Lebanon Nepal Russian Federation Samoa Sao Tome and Principe Saudi Arabia Seychelles Sudan Tajikistan Tonga Ukraine Uzbekistan Vanuatu Vietnam Yemen Yugoslavia, Fed. Rep. of Note: With the exception of the Holy See, observers must start accession negotiations within five years of becoming observers. Volker Plogmann

12 Why Intellectual Property Rights ?
World of Patents „Worldwide there are more than 4 million patents in force, every year it will be applied for patents for about inventions. For each invention a patent will be requested in average in 4 countries. By licensing patents have achieved royalty payments in the amount of about 100 billion US$ in 2000, 10-times as much as 1990.“ Volker Plogmann

13 Why Intellectual Property Rights ?
Patents in and for Europe „In the year 2000 about patent applications have been filed with the EPO. Nearly 70 % of the applicants allover the world trust the EPO with the examination of their applications. For Patent Searches the EPO has access to about 38 million documents from more than 60 countries. About 50 states have adapted their patent systems more or less to the European Patent Convention, having increasing influence in many countries of the world.“ Volker Plogmann

14 Commercial Benefits from IPRs
Protection of own business (!!) prevent copying cross licensing basis (free to market) keeping price level of own products Cooperation with other parties Transfer out (License/Sale) Transfer of Technology possible !! Controlling use of joint results Use of joint patent ownership to avoid antitrust problems Volker Plogmann

15 Patents in Force Volker Plogmann

16 Application Activities
Volker Plogmann

17 Worldwide Patent Activities
Volker Plogmann

18 Application Activities - Globalization
Volker Plogmann

19 Application Activities - Globalization
Volker Plogmann

20 „Licensing“ and TT Negotiation Skills for Licensing Technology
General Possibilities Sale Licensing Types Terms Issues in Licensing Exploitation of Technology and Intellectual Property Rights (IPRs) When technology is to be used in cooperation with a third party, whether in the form of a license, as it is the main aspect of this paper, or by merger or by taking capital investment of a third party into the company owning the technology, it is of tremendous importance to determine the value of patents and other intangible assets, in the following designated as Intellectual Property Rights (IPR), belonging to the respective entity. In many instances, said IPRs, understood in a broader sense, do already exist by the mere creation of a technology etc., in other instances an appropriate protection by registered IPRs is necessary or at least advisable. Volker Plogmann

21 „Licensing“ and TT „Permitting“ licensor => licensee
Anything, which is owned by the licensor and otherwise could not be used by the licensee 1) Due to legal reasons (IPRs) 2) Due to factual reasons (Know-How) Licensing and IPRs Licensing means "permitting", and quite in general nothing can be licensed which the potential licensee is enabled or permitted to do even without the permittance by the potential licensor. Usually, and at least in the understanding of this paper, by "licensing" it is understood that a third party is enabled to use patents and other IPRs which otherwise that party, the licensee, could not use. Insofar, one has to distinguish between two completely different aspects of licensing, namely the enabling and the permitting aspect. Volker Plogmann

22 Types of Transfer of Technology
Product/Service/System Transfer of Equipment Transfer of Know-How Transfer of Permittance As an example, in case of a pure know-how license, licensing means that the licensor enables the licensee to use the licensed know-how by disclosing same to the licensee, since otherwise, without the specific knowledge achieved by licensing, the acquiring party, the licensee, as a matter of course could not use such know-how. In other cases, like in a pure patent license, where the licensor would not undertake any obligation to teach the licensee anything more than one could already learn from a respective patent specification, there is only a licensing in the sense of permitting the licensee to use the otherwise exclusive right of the licensor as granted by the patent. Unregistered Exclusive Rights Often when licensing is taken into consideration, not sufficient attention is given to the fact that there are also unregistered exclusive rights which give the potential licensor a competitive edge, e.g. a lead in the market, and therefore represent a value which economically can be used for licensing purposes. Volker Plogmann

23 Coverage of License Agreement I
Which IPRs ? registered / non-registered Where ? territorial boarders / markets Time Frame ? Start / End / Termination Volker Plogmann

24 Coverage of License Agreement II
Quantity ? Quality Control ? Support Technically / Marketing Documentation technical drawings, specifications, market search results... Volker Plogmann

25 Kinds of License Agreements
Exlusive License „Sole“ License Non-exclusive License Volker Plogmann

26 Valuing the Technology
Cost approach Market approach Benefit approach 25 % “Rule“ Technology Factor and others Volker Plogmann

27 Licensing Terms Running Royalties Downpayment/Milestones/Installments
Sliding Capped Downpayment/Milestones/Installments Creditable or not Minimums (Maximums?) Volker Plogmann

28 Limitations and Restrictions
Field Geography Time Terminal Rights Volker Plogmann

29 Warranties Protection Freedom Technical / Product Liability
Volker Plogmann

30 Intellectual Property Rights
Thank you for listening! Volker Plogmann

31 WIPO WORKSHOP ON INTELLECTUAL PROPERTY FOR BUSINESS FOR SMALL AND MEDIUM-SIZED ENTERPRISES (SMES) Workshop in Dar-es-Salaam, May 10 and Dipl.-Ing. Volker Plogmann Managing Director Patent and Trademark Department Wilhelm Karmann GmbH Full Service Vehicle Supplier, Osnabrück, Germany Volker Plogmann

32 Wilhelm Karmann GmbH Karmann Ghia Coupe 1955 Volker Plogmann
Wilhelm Karmann GmbH - Shaping the future of automobile As one of the world's most successful full-service-vehicle-suppliers, each and every day, we are working on the future of the automobile as a forerunner, setting new standards through our engineering solutions. Tradition and innovation are the two components of our drive – the market and the high standard of requirements of our customers are our impetus. Indeed, the name "Karmann" stands for quality and reliability, expeditiousness and flexibility, and thus, ''Karmann'' signifies a permanently high level of performance. Specifically, in the development stage of new products. Volker Plogmann

33 Complete Vehicles Audi A4 Convertible 2002
Mercedes-Benz CLK Convertible 2003 Chrysler Crossfire Coupé 2003 Chrysler Crossfire Roadster 2004 International OEMs Our current reference list includes the Audi A4 convertible, the Chrysler Crossfire Coupe, the Chrysler Crossfire Roadster and the Mercedes-Benz CLK convertible. We supply modules for the Jaguar XK8 convertible, the Renault Mégane convertible and the Mercedes-Benz SLK. In addition, we were in charge of the development of the Volkswagen New Beetle convertible and the Mercedes-Benz Vaneo and the MAN driver's cabin Trucknology including the manufacturing of the production facilities. The roof modules for the New Beetle convertible are now being produced by Karmann-Ghia of Mexico. Our company is indeed famous for its expertise in convertibles. However, if you take a closer look, you will find that there is so much more to Karmann. Volker Plogmann

34 Roof Systems VW New Beetle Convertible 2002 Volker Plogmann
Renault Mégane Coupe-Convertibles 2003 Volker Plogmann

35 3.5 Million Vehicles 1949-2004 Selection from reference vehicle list:
VW Golf A1 Convert. 388,522 units VW Beetle Convert. 331,847 units VW Karmann Ghia 362,601 units VW Porsche 914 118,949 units VW Scirocco I 504,153 units BMW 6th Series 96,149 units VW Scirocco II 291,497 units Ford Escort Conv. 104,237 units VW Corrado 97,521 units Ford Escort Conv. 83,983 units VW Golf A3 Convert. 139,577 units Renault Mégane Conv. 58,867 units 3.5 Million Vehicles Since 1949, more than 3,5 million vehicles have been built by Karmann. Some examples are the Volkswagen Beetle convertible, the legendary Karmann Ghia, BMW coupes, the Volkswagen Porsche 914, the Volkswagen Scirocco and all Volkswagen Golf convertibles. A complete overview may be found in the history section. Merc.-Benz CLK 81,518 units Audi 80 Convertible 12,012 units VW Golf A4 Convert. 72,666 units Merc.-Benz CLK Coupé 31,568 units Audi A4 Convertible 20,906 units Chrysler Crossfire Volker Plogmann

36 Global Locations Volker Plogmann Karmann-Rheine GmbH & Co. KG
Vehicle Production Wilhelm Karmann GmbH Osnabrück Vehicle Engineering • Tooling Roof Systems • Production ATP Automotive Testing Papenburg GmbH Papenburg Proving Ground Karmann U.S.A., Inc. Plymouth, Michigan Vehicle Engineering Julius Heywinkel GmbH Bramsche Fabric & Plastics Production AGS GmbH Osnabrück Logistics Services Karmann-Ghia de Mexico Puebla Roof System Production Karmann-Ghia do Brasil Ltda. Sao Paulo Tooling • Stamping Vehicle Production Karmann-Ghia de Portugal Lda. Vendas Novas Fabric Production Volker Plogmann

37 Wilhelm Karmann GmbH Germany - Osnabrück Service Spectrum:
Vehicle Engineering • Tooling Roof Systems • Production Founded: 1901 Employees: 6,106 total area: m2 built-on-area: m2 Current Key Products: Chrysler Crossfire Coupe MB CLK Convertible MB SLK (BIW Module) Volker Plogmann

38 Karmann-Rheine GmbH & Co. KG
Germany - Rheine Service Spectrum: Vehicle Production Founded: 1965 Employees: 1,760 total area: m2 built-on-area: m2 Current Key Products: Audi A4 Convertible Renault Mégane II CC (RHT module) Jaguar XK8 (Soft-top Frame) Volker Plogmann

39 Karmann-Ghia do Brasil Ltda.
Sao Paulo Service Spectrum: Tooling • Stamping Vehicle Production Founded: Employees: Current Key Products: Final Assembly of Land Rover 90 SW Tools for DC, Dana, Fiat, Ford, GM, Krupp, Land Rover, Honda, Renault, Scania, Volvo, VW Stamping Parts for DC, Fiat, Krupp, Scania, TWB, Volvo, VW Volker Plogmann

40 Karmann-Ghia de Portugal Lda.
Vendas Novas Service Spectrum: Fabric Production Founded: Employees: Current Key Products: Fabric & leather seat covers for Audi A4 Convertible BMW new 5 series Ford Galaxy Land Rover MB CLK Convertible VW Sharan Seat Alhambra Volker Plogmann

41 Karmann-Ghia de Mexico
Puebla Service Spektrum: Roof System Production Founded: Employees: Current Product: Soft-top System for Volkswagen New Beetle Cabrio Volker Plogmann

42 Karmann U.S.A. Plymouth,Michigan Service Spectrum: Founded: 1996
Vehicle Engineering, Roof System Production (2006) Founded: Employees: Volker Plogmann

43 ATP Automotive Testing
Papenburg Service Spectrum: Proving Ground Engineering Operation Begin: Employees: 100 Testing Area: ha Volker Plogmann

44 Full Service Supplier Volker Plogmann Styling
Concepts/ Advanced Engineering FEM Analysis Package/ Measure Concept/ Surface Class A Design/ Engineering Plastics Technology Roof Systems BIW Assembly Systems Tools & Dies Machining Engineering/ Concept Vehicle Testing Prototypes Powertrain & Chassis Integration QA Tooling Stamping Body-in- white Module Manufact. Paint Shop Soft-top Production Final Assembly Volker Plogmann

45 Division & Structure in Osnabrück
Vehicle Engineering Tooling Production designStudio BIW Assembly Systems Tools and Dies Machining Stamping conceptTeam Body-in-white FEM Analysis Modules/Components Package/Measure Concept/ Surface Class A Roof Systems Paint Shop Design/Engineering Final Assembly Prototypes Development Design Testing Production Plastics Technology Division and Structure Now i want tell you more to the practical, day-to-day problems of R&D divivons and the interrelationsship with Intellectual Property Department. Intellectual Property Management Prototypes Vehicle Testing Volker Plogmann

46 Patents, Utility Models
Intellectual Property Department IP Department Patents, Utility Models Trademarks, Designs Licensing Administration Volker Plogmann

47 Intellectual Property Management
The protection of innovative solutions and the covering of Know-How in respect of the economic advantages in national and international competition is the major task of an Intellectual Property Management The support and the consulting in-house is another topic of the Intellectual Property Management Law of Contract (Patents and Licenses) Online research in patent databases National and international prosecution Patent litigation Volker Plogmann

48 Setting up a patentportfolio
Patent Strategy Support in reaching the company targets Economical and professional protection of own inventions Decrease the risk of a blocking by competitors Avoidance of patent infringement Setting up a patentportfolio Volker Plogmann

49 Patent Strategy Questions to be answered:
a) Shall a patent be applied for an invention? b) At what time should the application of an invention take place? c) Can invention be kept secret for „absolute reasons“? c) Which scope of protection should be aimed for? d) In which countries should an application take place? Beginning from questioning to Service Invention Service Invention The most difficult question of people working in the R&D division of a company is to determine the point in time when to contact the patent department with respect to a new invention. The principle should be to have a first contact as soon as possible, even during the time of developing the concept for a new project, the main reason for that being that the IP department should conduct at this very early stage, a search for relevant prior art for two reasons, namely a)to make additional information available to avoid double work, i.e. to avoid "inventing" something which has already been invented in the past; and b)to avoid running into infringement problems lateron, i.e. to try from the beginning on to find solutions for existing problems which do not fall into the scope of protection of existing patent rights. Volker Plogmann

50 Service Invention R & D Division IP Department Search for prior art
Filing an application From then on, there should be a continuous contact between R&D and IP department in order to enable the most appropriate point in time when to file a patent application, i.e. to determine when there is enough information available to state that the patent invention has been "completed". The patent application should not be too early in order to avoid that there is too much of a risk that later results might be contradictory or leading in a different direction, but it should also not be too late to ensure the earliest possible priority. Search for prior art We have already shortly discussed the necessity of a thorough search for prior art at an early stage. This search can be done by different ways and in different steps. A first step could be collecting of all information available to R&D defining their own starting point for the research. Volker Plogmann

51 Service Invention 1. Employee's invention law (The German Problem!)
Technical inventions Inventorship Right to apply for patents Definition of invention Definition of employee Service or free invention In a second step there should be a search for prior art in paten literature which can be done within the patent department or using competent outside searchers. There are various appropriate sources for doing such searches, for example various database such as Derwent. In the future, there will be certainly more and more opportunities to search via internet. In a third step (possibly simultaneous to the second step), an additional search in scientific literature, also via database or internet, might be recommendable, depending on subject-matter of the project. Volker Plogmann

52 Patent Strategy 2. Evaluation of inventions
Evaluation for the classification of the inventions concerning the intended registration Orientation at markets and the competitive position Evaluation of the invention by representatives (Management of Technical Development and its department managers) Evaluation of Invention After having reviewed the results of the respective R&D project as well as available relevant prior art, the patent department (or an outside patent councel) has to evaluate the chances of success for obtaining patent protection as well as the status of the project in order to determine the best point in time for filing the application. At this state, it is also necessary to decide whether the results of the project can be combined within a single application or will have to be split into several independent applications, if there is lack of unity amongst the various aspects of the project needing protection. An application cannot claim simultaneously a car, an improved distillation column and a pharmaceutical. Such an application would lack of unity from the outset (a priori). This type of lack of unity would be discernible before drafting the application, even without considering the relevant state of the art. Volker Plogmann

53 Patent Strategy 2. Evaluation of inventions (Example) Volker Plogmann

54 Patent Strategy 3. Incentive-Program
(Law relating to inventions of employees) an incentive is paid after registration of an invention a payment according to the Employee´s invention law is done after a patent is granted and used in a product (award to the inventor) Volker Plogmann

55 Patent Strategy 4. First filing applications
Patent application - yes or no? Patent application - where and how?  National Territories Application drafting When the patent department believes the invention to be completed to a sufficient degree, claims and specification of the intended patent application should be drafted according to the principles already discussed. This first version of the patent application should be carefully reviewed by the inventor(s) and possibly discussed personally with the patent department, if clarification seems to be required. There are two tendencies of inventors which need specific attention by the patent department. Volker Plogmann

56 Patent Strategy 4. First filing applications
National Patentlaw (harmonised) National Patentoffices National Patents National, independend proceedings in all countries, where the patent will be registrated a „worldwide patent“ does not exist ! a) The inventor is not able to find his invention in the application text because of the specific language of claims and specification to be chosen in drafting. Thus, it is recommendable in most cases, to at least have one or more examples reflecting the information from the inventor(s) in order to allow identification with the application. b) The inventor wants to cover a very broad range, adding more and more theoretical alternative or ideas to the application. It has to be carefully checked whether incorporation of such alternatives and addition is possible in view of unity of invention and, in particular, sufficient support by appropriate factual results. Volker Plogmann

57 Patent Strategy 5. Foreign subsequent applications
Foreign protection Selection of countries (production; markets) National applications PCT EPC Volker Plogmann

58 Patent Strategy Paris Convention international convention
subsequent application in the member states possible 164 member states right of priority (1 year) Volker Plogmann

59 Patent Strategy 6. Examination procedure
Getting a maximum extent of protection Volker Plogmann

60 European Patent Office
27 contracting states 5 extension states Registration / Search / Examination Grant / Opposition / Appeal Distribution of a „European Patent“ * ** AT Österreich AL Albanien AT Österreich LT Littauen BE Belgien LV Lettland GR Griechenland MK Mazedonien IE Irland RO Rumänien CH Schweiz SI Slowenien IT Italien CY Zypern LI Liechtenstein DE Deutschland LU Luxemburg *** siehe beigefügte Liste DK Dänemark PCT-Länder (PCT-Anmelde- MC Monaco Formular) ES Spanien NL Niederlande FI Finnland PT Portugal FR Frankreich SE Schweden TR Türkei GB Vereinigtes Königreich Volker Plogmann

61 European Patentsystem
Distribution procedure EPO European Patent (“Regional-Patent”) Nationalization DE FR AT XY Volker Plogmann

62 PCT-System Patent Cooperation Treaty (PCT)
international announcing authority 123 Member countries Registration / Search / Preliminary Examination no distribution of a patent national/regional distribution procedures necessary (PCT is an „Preliminary stage “) * siehe beigefügte Liste PCT-Länder (PCT-Anmelde-Formular) Volker Plogmann

63 PCT-System International Phase PCT National and regional Phases TZ DE
US Volker Plogmann

64 PCT-System First filing, DPMA PCT-filing, DPMA, EPC (Priority)
Request for Int. Preliminary Examination End of International Phase EP DE US TZ JP Month 12 19 (20) 30 Volker Plogmann

65 Fees and Renewals 7. Fees and Renewals Payment of procedural fees
administrative fees maintenance fees Screening of the Patentportfolios takes place annually Volker Plogmann

66 Cost schedule of a patent family (I)
Locking device for cabriolet-tops First filing of the invention in Germany Foreign subsequent applications in USA, Japan and in Europe Volker Plogmann

67 Cost schedule of a patent family (I)
Volker Plogmann

68 Cost schedule of a patent family (II)
Element made of foamed metal First filing of the invention in Germany Foreign applications in USA, Japan and Europe Two oppositions in the german and in the european procedure Volker Plogmann

69 Cost schedule of a patent family (II)
Volker Plogmann

70 Patent Strategy 8. Observation of competitors
Examination of published registrations of third parties Distribution of specific patent information to the specialized divisions specific monitoring of selected competitors Volker Plogmann

71 Patent Strategy 9. Execution of infringement procedures
Infringement of patents of third parties Development of a strategy to the practice: Objection, nullity, license negotiations Infringement of own patent rights Discussion with the management whether or not to proceed against violators Volker Plogmann

72 Thank you for listening!
Patent Strategy Thank you for listening! Volker Plogmann


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