WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 Patents in the Electronic (and IT) Industries Olivier Sacroug European Patent Attorney Katzarov SA

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 What is a patent? –Contract with the society You disclose your invention to the public and, as a counter- part, the government grants you with a 20 years monopoly –Patents are national/regional no effects outside their jurisdiction –Right to exclude others from making, using, offering for sale, selling, importing the invention –Patents do not provide you with the right to make, use, offer for sale, sell or import your own invention –Patentee must enforce the patent

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 Why should I apply for a patent? –Immediate value Grants you with a property right on your inventions Gives you a monopoly on these inventions Protects your developments, R&D investments Licensing opportunities

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 Why should I apply for a patent? (2) –Indirect value To help convincing investors / partners To strengthen your position in negotiations with partners / competitors

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 Why are patents particularly important in the Electronic and IT industries –Copying / reverse engineering is relatively easy –Very active and aggressive environment

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 Why should I not file patent application in the Electronic and IT industries –Business is often faster than patent offices

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 WIPO Statistics

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 Source: Trilateral Statistical Report, 2005 edition; jointly produced by the EPO, JPO and USPTO; Edited by the JPO, 2006.

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 What can I protect with a patent? –Almost any new and inventive technical solution Components (filters, connectors,...) Composition of matter Machines (machine tools, electronic equipment,...) Manufacturing methods Services (e.g. over telecommunication networks) Software ?!

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 Example 1: connector

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 Example 2: electric filter

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 Example 3: comp. alignment

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 Example 4: inspection module

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 Example 5: billing process

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 Example 6: single sign-on process

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 How should I proceed? –Start early in the development process –Identify the elements of your solution / idea that bring a real commercial advantage –Depending on the complexity of the project, be ready to file more than one patent application

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 Patents are only delivered for NEW inventions –DO NOT DISCLOSE your invention before you filed a patent application

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 What is considered as a disclosure? –publication article in a journal or a newspaper flyer abstract pre-print website, blogs, Internet postings letters, fax, s discussion with friends –public use –offering for sale

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 What is NOT considered as a disclosure? –discussions inside the company, in a lab,... –letters, faxes, s, discussions, seminars if they are explicitly covered by a NON-DISCLOSURE AGREEMENT

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 In case of a disclosure by the inventor –Grace period –USA, Canada: 1 year –Eurasia: 6 months –Europe, Japan, India and most countries: 0 days

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 Other forms of IP protection –Petty patents (utility models, modèles dutilité, Gebrauchsmuster, etc.): usually more limited in time (5-15 years) –Designs: protects only the visual aspect –Topography: protects a specific design of an integrated circuit –Trademarks

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 Where should I apply for a patent? –The legal effects of a patent effects are limited to a country or a region –There are no such things as international patents

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 Where should I protect my invention? –Own country of development / production –Main competitors countries of production –Main markets

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 Provisional patent application –Short deadline (before a fair, etc.) –Limited financial resources –Very early stage, details of solution unclear –Extend the life of the patent (pharma) –MUST be transformed within 12 months

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 International PCT application –Covers most countries –Postpone strategic decisions (30 months) –Postpone major costs –Search report and possible examination –MUST be transformed into regional/national patent applications

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 Direct National/Regional filings –Cost effective –No modification of the geographical coverage possible after 12 months from the priority date (date of first filing): requires a well-defined strategy from the start

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 Source: Trilateral Statistical Report, 2005 edition; jointly produced by the EPO, JPO and USPTO; Edited by the JPO, 2006.

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 Adapted geographical coverage: essential –A single patent covering one country can be as efficient as several patents covering an entire continent –If neither the competitors countries nor the markets are covered : no big use

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 Questions?

WHY?WHAT?HOW?WHERE? Copyright © KATZAROV S.A.19/02/2007 Olivier Sacroug Katzarov SA European Patent & Trademark Attorneys Geneva and Basel Tel: Fax: Thank You!