Practical Aspects of IP Arbitration: Improving the negotiating position Olav Jaeger September 14, 2009

September Background 2.Types of intellectual property rights in Europe 3.Application strategies

“The art of war teaches us to rely not on the likelihood of the enemy's not coming, but on our own readiness to receive him; not on the chance of his not attacking, but rather on the fact that we have made our position unassailable.” Sun Tzu September 09 3 Background

■Rights granted by IP ■a patent provides the right to exclude any third party from making, using, selling and offering for sale ■a trademark confers on its proprietor an exclusive right to use the trade mark and to prevent third parties to use, without consent, the same or a similar mark for identical or similar goods and/or services trademark ■a design provides a exclusive right to use the design concerned and to prevent any third party from using it ■The term “use” includes making, offering for sale and selling September 09 4 Intellectual Property Types

■There are different kinds of national and European intellectual property rights ■National IP rights ■Patents ■Utility model ■Trademarks ■Design ■European Patent ■European Community rights ■Trademark ■Design September 09 5 Intellectual Property Types

■National intellectual property rights ■Obtained through national Offices ■filing language: national language or any (with translation filed later on), depending on IP type ■Examination depending on IP type and national law ■Duration depending on IP right (subject to extension fees) and national law ■Patent: up to 20 years ■Utility model: up to 10 years ■Trademark: infinite ■Design: up to 25 years ■Protection only in the respective national state September 09 6 Intellectual Property Types

■European Patent ■Obtained through EPO ■filing language: DE, EN, FR or any (with translation necessary later on) ■Examination on patentability ■Validation in member states of the EPO ■Duration (subject to renewal fees): up to 20 years ■Protection only in validated member states September 09 7 Intellectual Property Types

■Community intellectual property rights ■Obtained through OAMI ■filing language: DE, EN, ES, FR, IT ■Examination depending on type and council regulation ■Duration depending on IP right (subject to renewal fees) and council regulation ■Community trademark: infinite ■Community design: up to 25 years ■Protection within the European Community September 09 8 Intellectual Property Types

■National patent ■protection in national state ■European Patent ■protection in validated member states ■Community rights ■protection within the EC September 09 9 Intellectual Property Types

■Situations for many Chinese companies regarding European IP rights: -no IP rights at all osome foreign IP rights (e.g. some CN patent s or patent applications pending) osome European IP rights (e.g. some EP patent applications pending ☺many European IP rights (e.g. different IP types, many EP and national patents as well as patent applications pending) September Application Strategies

September Application Strategies ■Possible strategies to improve situation related to patents ■WO-Applications + filing in CN possible + broad range of countries including EP + most relevant cost decision can be postponed -long duration until grant ■Costs appr.: 4500 € (application with 20 pages, 10 claims with EPO as ISA)

September Application Strategies ■Possible strategies to improve situation related to patents ■WO-Application duration month 30, national applications, e.g. US, DE, FR WO subsequent application WO application regional applications, e.g. EP national application

September Application Strategies ■Possible strategies to improve situation related to patents ■EP-Applications + filing in CN possible but English translation required before obtaining search report + two stage granting procedure: search - examination + protection in validated members states, can be postponed until grant o faster than WO-application, but often slower than national procedure ■Costs appr.: € to € ( 6 validated countries )

September Application Strategies ■Possible strategies to improve situation related to patents ■EP-Applications duration grant EP subsequent application validated patents in member states WO application 12 national application EP application 31

September Application Strategies ■Possible strategies to improve situation related to patents ■National applications + normally the fastest way to get a patent + relatively low administrative fees - national language required - protection in only one country ■Costs depending on country, appr.: 2000 – 7000 € (application with 20 pages, 10 claims)

■recommended measures for improving portfolio situation in Europe ■WO / EP application for future technologies ■identify and protect key technology ■long duration is not important ■national applications in key customer markets ■mostly well established system for litigation ■acknowledged quality of examination (DE) ■utility models where possible ■fast, cheap, but unexamined ■good for counterclaim September Application Strategies

September Application Strategies ■Possible strategies to improve situation related to other IP rights ■National designs + fast and cheap registered IP right - not examined - protection in only one country ■Costs depending on country, appr.: 500 – 2000 € ■Community designs + very fast registered IP right (24 – 48 h to registration) + every product within the EC is unregistered EC design + protection within the EC - not examined ■Costs depending on country, appr.: 1000 – 2000 €

September Application Strategies ■Possible strategies to improve situation related to other IP rights ■National trademarks + cheap registered IP right - examination depending on national law - protection in only one country ■Costs depending on country, appr.: 1000 – 3000 € ■Community trademarks + examination on absolute grounds for refusal + protection within the EC ■Costs appr.: 2000 – 5000 €

■recommended measures for improving portfolio situation in Europe ■National/Community designs ■identify and protect key designs using Community Designs ■protect key markets with additional national designs ■good in combination with other IP rights ■National/Community trademarks ■protect products with newly introduced technology ■well established system for litigation ■good in combination with other IP rights September Application Strategies

Practical Aspects of IP Arbitration: Improving the negotiating position