Managing IP Risk in the Supply Chain - Identifying The Weakest Link 02/11/2016 Time: – Dr N. Imam Partner at Phillips & Leigh Registered UK and European Patent Attorney Exhibition location:L84

Common Intellectual Property One product creates multiple different rights PRODUCT TRADEMARK a sign indicating the origin of the product Dyson Airblade TM Design “Hand driers” (Dyson) only showing the ‘appearance’ DESIGN Patent (Dyson) “DRYING APPARATUS COMPRISING A FILTER” (WO ) detailing the ‘function’ PATENT

Types of Patent Claim A)Product Claim – provides protection to a physical entity; i.e. a product (or material) or an apparatus (or device, system, article) B)Process Claim - provides protection to one or more activities, i.e. a process (or method) C)Product by Process Claim - directed to a product where the product is defined by its process of preparation, e.g. chemical process. D)Use Claim - new use of a new or known product

Consequence of Infringement Legal Action requiring significant management time; Significant financial loss; Affect Reputation.

Types of Infringement - examples Direct  Manufacture patented product  Use patented process  Sell patented product or product of patented process  Import patented product Indirect  Sell parts used in the manufacture of patented product  Sell a product with instructions on using a method that infringes a patented process  Sell material or components that have been specifically made for use in a patented product

Housing Toilet Roll Rotary shaft Toilet Roll Holder

Product Claims Toilet roll holder Toilet Roll Toilet Roll Paper Process Claims A method of manufacturing a toilet roll holder A method of manufacturing perforated paper A method of manufacturing toilet roll paper

The Operation 2 nd tier supplier 1 st tier supplier 1 st tier customers 2 nd tier customers Company A The Supply Chain Supply Distribution Supply of paper Supply of toilet roll cut to size Assembly of toilet roll holder Shop / distribution warehouse End User

Possible Infringement Case Company A (UK operations) Granted European Patent having: – A product claim to the toilet roll holder – A product claim to the toilet roll holder incorporating the “sized” toilet roll – A process claim to the assembly of the toilet roll holder  In force in UK, Germany and France Company B (German operations) Assembling a toilet roll holder using the same process as Company A Requires the same cut of toilet paper as company A Sold throughout Europe

The Operation 2 nd tier supplier 1 st tier supplier 1 st tier customers 2 nd tier customers Company B Infringement Supply Distribution Indirect infringers Indirect infringers Direct Infringer Direct infringers Direct infringers

Infringement in Germany Direct Infringement  Company B for making the toilet holder to the patented product claim  Distributor of the patent toilet roll holders  Shop for selling the patent toilet roll holders  End user for using the patent toilet roll holder [but not if for personal use] Indirect Infringement  Supplier of paper for use in the toilet roll  Possible staple product exemption  Supplier of toilet roll using the paper perforated to size

Infringement Infringement in areas where the patent is in force:  UK, Germany and France Indirect Infringement – the double requirement: 1.Supply means relating to an essential element of the patent invention in the national jurisdiction 2.Means are supplied to put the invention into effect in the national jurisdiction Paper is a staple product, therefore probably no indirect infringement But if the act of supplying the paper was for the purpose to carry out the claimed invention i.e. to make the toilet roll to size, indirect infringement still possible

Current and Future Patent Systems Today’s European Patent (EPC) system: Filed at the European Patent Office (EPO) Prosecuted and Granted at the EPO Validated in individual member states – some translations required Member States include: All EU states + Iceland, Norway, Switzerland, Turkey, Albania, Serbia and Macedonia “a bundle of national patents” Patent enforcement is done in individual national jurisdictions Revocation procedure must be completed in each validated country

Current and Future Patent Systems Unitary Patent System: Proposed legislation to create a European Union wide Unitary patent a single patent covering ‘most’ of the EU member states Single fee to keep patent in force throughout most of the EU Central Unified Patent Court to enforce the Unitary Patent (and “ordinary” European patents) Infringement and Revocation procedures handled centrally

Indirect Infringement EPC - present Double requirement 1.Supply an essential element of the patented invention in the territory; 2.Means are supplied to put the invention into effect in the territory. Manufacturer selling products in his home market only need to consider patents in force in that country. Unified Patent Court– future? No double requirement in a territory: 1.Supply an essential element of the patented invention in Europe (UPC State); 2.Means are supplied to put the invention into effect in Europe (UPC State). Manufacturer selling products in his/her home market would need to consider patents in force elsewhere in Europe (UPC State). Liability depends on whether products used in a UPC State. The Unitary Patent on hold following Brexit – but alternatives under discussion

Conclusions Direct and indirect infringement lies around every corner In developing a new product you could be infringing an existing patent - clearance searches are only so good Any product could potentially merit a new patent application, ask: - is the product new i.e. not publically disclosed? - does the new product solve a problem? - does the new product give you the chance to patent? - can you control the products you have developed? If in any doubt, engage a Patent Attorney Find us at L84 to discuss your IP possibilities

Disclaimer: This presentation does not constitute legal advice, and in particular the treatment of the examples reflects the personal opinion of the author.