Presentation on theme: "From Invention to Patent -Patents as Tool for Economic Success- WIPO – INSME International Training Program IP and Management of Innovation in SMEs May."— Presentation transcript:
From Invention to Patent -Patents as Tool for Economic Success- WIPO – INSME International Training Program IP and Management of Innovation in SMEs May 11, 2005 Christian W. Appelt German and European Patent and Trademark Attorney
BOEHMERT & BOEHMERT What is IP – Why do we need IPRs? 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?
BOEHMERT & BOEHMERT Major Effects of Patents Patents control a product or market segment Patents disclose knowledge to public Patenting requires money –Costs for application and prosecution –Renewal fees To patent or not to patent???
BOEHMERT & BOEHMERT Criteria for IP decision - market Factor time –Patent prosecution 2-4 years –Patent enforcement 1-2 years (longer?) Market/competitor situation –behavior of competitors –Possibilities for cooperation –Possibilities for other products, circumventing scope of protection
BOEHMERT & BOEHMERT Criteria for IP decision - procedural Legal (Patent Law) –Publication after 18 months –Possibly patenting by competitor Technological aspects –Technical advantage –Possibilities for keeping secret –Technical alternatives
BOEHMERT & BOEHMERT Criteria for IP decision - financial Costs for a patent –European Patent: EUR 10.000 to 40.000, depending on no. of designated countries –National Patent: EUR 5.000 to 10.000 –Renewal Fees Costs for enforcement/litigation (national) –Depending on country (DE US) –Cost risk DE: EUR 60.000 to 200.000
BOEHMERT & BOEHMERT Defensive/passive Strategies Keeping secret –Non-disclosure of technical knowledge Due Diligence –Search and evaluation of IPRs of Third Parties Publication (Secret Publication) –Preventing patents of Third Parties
BOEHMERT & BOEHMERT Active Strategies Application strategy –Which technology where to patent ? Market Place of business of competitor Enforcement systems (legal, time, costs) Enforcement Strategies –Litigation / Monopoly –Cooperative strategies
BOEHMERT & BOEHMERT Application Strategies Application of basic patents –Patents with broad scope of protection –Already very few (single) patents effective –However, often not possible (in third hands) Application of enhancement –Smaller scope of protection more patents necessary –holes in protection of basic patent by alternative solution –Stopping further enhancement of basic product –Dependent patents cross licensing
BOEHMERT & BOEHMERT Basic Technology vs. Further Enhancement
BOEHMERT & BOEHMERT Patent or Know How ? Can invention be kept secret for absolute reasons? Can invention be kept secret for relative reasons? –Persons involved internally –External cooperation –Secrecy agreement –Secret publication
BOEHMERT & BOEHMERT Advantages of IPRs (Patents) Protection of own business –Control of own Technology (Start Ups, SMEs) –Freedom to market (!!) –Access to external Technology –Currency: technology Licensing (and Technology Transfer TT) Medium term goals
BOEHMERT & BOEHMERT IPR – Generating Process State of Art / Problems / Searches R&D, Manufacturing, Ideas, … Finalization of an invention? Confidentiality Agreements / no publication/use Early Filing of 1 st application –delay of further costs (foreign filings, EP, PCT,…)? First protect, then make business! (or Know How ?)
BOEHMERT & BOEHMERT Patents in Force (Source: EPO – Trilateral Web Site)