Patent Information – The Key to Attack and Defend Heinz Mueller Swiss Federal Institute of Intellectual Property / ip-search London IP Summit October 2015

Two strategies: Reactive Defense: negotiate with attackers Attack: counter-attack plaintiff with invalidity challenge Proactive Defense: Build a patent fence (large patent portfolio) Attack: remove hurdles by attacking or negotiating 2

The starting point to defend and attack: A high quality patent and literature search 3 Key quality factors for the provision of IPR services, perceptions of Swiss users of such services according to relevance, service users in %, aggregated answers for all services benchmarked Answers in %

4 Innovation chain proactivereactive Freedom-to-operateValidity Prior ArtPatent Landscape Monitoring Prior Art

Communication as key factor 5

Pre- and post-grant Searches 6 Pre-grant (own IP) Novelty Inventive step Validity  Proceed or retract Pre-grant (third party IP) Validity  prepare for opposition Post-grant (third party IP) Freedom to operate Alledged infringement Monitoring of competitors Challenging the validity of a third party patent  Cease and desist letter Opposition Litigation PRE- POST- GRANT

Tailoring the searches to the customer’s needs 7 Individual searches Tailored to the client’s segment (individual inventor, academic researcher, patent attorney, etc.) Tailored to the needs of the individual customer Tailored to the type of search (novelty, validity, freedom-to-operate, etc.) Tailored to the legal environment (clients country, client’s position, clients alliance, etc.) Tailored to the amount of money the customer is spending

8 The different patent searches Market Innovation chain Development Research Number of searches Prior art Validity Monitoring Freedom to Operate Patent- Landscape Bibliographic searches

Why invalidate or revoke a patent, and when? Blocked freedom-to-operate Attacked by a patent holder  counter- claim of invalidity Competition Invalidate or revoke a patent or patent claim: In pre-grant examination procedures In post-grant opposition and appeal In post-grant national/regional procedures 9

Challenging the validity of a patent Conduct a validity search The patent validity search is generally wide-ranging and covers all types of disclosures: patent documents scientific documents/technical documents conference proceedings dissertations news internet pages catalogues etc. 10

Time is money 11 Before entering the market with a new product, a FTO analysis ought to be conducted. If the FTO analysis shows that the technology used for the new product is covered by a third party patent: Four possibilities remain:  stop the production (  time and money wasted)  negotiate a license (  money)  try to design around (  more time and money invested or impossible)  get rid of the patent in question (  prior art-based patent invalidity)

Alleged infringement 12 ActionSearch Counter-attack the patent holder with a nullity action Validity Stop the alleged infringementNo search tan agreement or a licenceDue Diligence: FTO, validity M&ADue Diligence: FTO, validity

The challenge of a FTO search It is not about finding a neele in the haystack  It is about finding all needles 13 Definition of the search Goal of the search Search strategy Scope of the claims countries («exotic countries») Complex patent families Legal status Presentation of the results in a customer friendly manner

Summary / Conclusions Searches might help to defend the IP or have freedom-to-operate Blocking of freedom-to-operate or counter-claim asks for validity searches Challenging the validity of a patent using all different sources of information in as many languages as possible FTO searches are a matter of trust in the search service and are complex searches In the majority of all cases, ip-search was able to find the documents that led to amendment or revocation of a patent before the Technical Board of the EPO. This might explain the significant increase in validity searches performed by ip-search 14

Thank you for your attention! 15 Prof. Dr. Heinz Mueller Patent Expert Swiss Federal Institute of Intellectual Property 3003 Bern Switzerland