1. www.ip4inno.eu ip4inno Module 5A IP Enforcement Name of speakerVenue & date

2. www.ip4inno.eu ip4inno is brought to you by: European Commission, DG Enterprise & Industry European Patent Office 19 consortium partners in the first ip4inno project This particular module was written by: Mariano Riccheri (coordinator) Ana Ramalho Istvan Mollnar Kristina Janusauskaite with funding from the EC and EPO

3. www.ip4inno.eu The Disclaimer! This training material concerns intellectual property and business strategies only in general terms. This training material should not be relied upon when taking specific business or legal decisions. Rather, professional advice should be obtained which suits the circumstances in question.

4. www.ip4inno.eu I.What is Intellectual Property ? II.Enforcing IP is defending your business assets... III.When and how should you enforce IP? IP infringement (civil and criminal) Other situations and options IV.Legal consequences of IP infringements What is at stake? (liabilities & remedies) V.Taking decisions under different infringement scenarios The owners perspective (avoiding litigation, going to court, customs action) The “alleged infringer’s” perspective An enforcement strategy VI.Workshops: case studies

5. www.ip4inno.eu I.What is Intellectual Property ? II.Enforcing IP is defending your business assets... III.When and how should you enforce IP? IP infringement (civil and criminal) Other situations and options IV.Legal consequences of IP infringements What is at stake? (liabilities & remedies) V.Taking decisions under different infringement scenarios The owners perspective (avoiding litigation, going to court, customs action) The “alleged infringer’s” perspective An enforcement strategy VI.Workshops: case studies

6. www.ip4inno.eu I. What is Intellectual Property? What Intellectual Property is, and which are the company assets which each category of IPRs protects... how IPRs are obtained... identify all the IP to be found in an object of common use (such as mobile phone) What will I know after this section ?

7. www.ip4inno.eu Intellectual Property Industrial Property Copyright and related rights Soft IP Other unregistered rights

8. www.ip4inno.eu Industrial Property Inventions Brands, logos Designs Patents, UMs Reg. TMs Reg. Designs These are registered rights. The inventor, creator or designer has no rights until they make a registration. Others can check if rights exist, and who owns them, by looking at the register.

9. www.ip4inno.eu Intellectual Property Inventions Brands, logos Designs Musical, dramatic, literary & artistic works Databases Reputation / Goodwill Designs Patents, UMs Reg. TMs Reg. Designs Copyright Database right Unreg. TMs Unreg. Designs These rights are unregistered - they exist from the moment the works are created. Ownership is harder to clarify without a register. The registered & unregistered rights together are called intellectual property.

10. www.ip4inno.eu Restrictive covenants Confidentiality agreements Copyright Database right Unreg. TMs Unreg. Designs Intellectual Assets Inventions Brands, logos Designs Musical, dramatic, literary & artistic works Databases Reputation / Goodwill Designs Know-how Trade secrets Confidential information Patents, UMs Reg. TMs Reg. Designs The formal registered & unregis-tered rights, when combined with this third group of "soft IP", are known collectively as intellectual assets.

11. www.ip4inno.eu One product – many IP rights image © NOKIA® Reg. Designs for phone shape Reg. Trade Mark - "NOKIA" & start-up tone Copyright - software, ringtones & images Patents - for technology to produce and operate. Some pooled or cross-licensed, others kept exclusive Trade secrets - some technical know-how kept "in- house" and not published

12. www.ip4inno.eu I.What is Intellectual Property ? II.Enforcing IP is defending your business assets... III.When and how should you enforce IP? IP infringement (civil and criminal) Other situations and options IV.Legal consequences of IP infringements What is at stake? (liabilities & remedies) V.Taking decisions under different infringement scenarios The owners perspective (avoiding litigation, going to court, customs action) The “alleged infringer’s” perspective An enforcement strategy VI.Workshops: case studies

13. www.ip4inno.eu II. Enforcing IP is defending your business assets Essential terminology... the importance of enforcing IPRs and developing an enforcement strategy... rules on enforcement: are they the same everywhere? What will I know after this section ?

14. www.ip4inno.eu What is “IP enforcement”? Essential terminology Obtaining protection = establishing ownership Enforcement = defending your asset Infringement = “trespassing” Relief = “stop trespassing” (and sometimes obtaining a compensation) Defence = giving a good reason for “trespassing”

15. www.ip4inno.eu Why is it important to incorporate an IP enforcement strategy in company decisions? Avoid the harm caused by “free –riders” of IP Ownership of Intellectual Property is often subject to dispute

16. www.ip4inno.eu Why ?...( cont.) Some effects of “free-riding” on innovative companies Deviation of earnings from innovator to imitator Erosion of IP assets’ value Determent of potential investors

17. www.ip4inno.eu The “non-excludable” nature of knowledge –once you know it, you can’t lose it !!! IPRs are intangible (thus, the “fence” limiting the “property” is less apparent) When IPRs are valuable they are tempting for imitators (as mentioned) Coincidental or dependable creation Collaborative works Why ?...( cont.) Conflicts over IPRs exist and aren’t so unusual

18. www.ip4inno.eu Why ?...( cont.) Source: Beardwood & Penner, IP Frontline – IP & Technology Magazine, 1 September 2010

19. www.ip4inno.eu Why ?...( cont.) “intelligent” mobile phones: multiple disputes

20. www.ip4inno.eu (Why?... cont.) D isputes over ownership of ideas and knowledge – more examples-. concerning the creation of a new product: e.g. Barbie vs. Bratz concerning the creation of a new entreprise: e.g. ConnectU vs.Facebook Photo: Craig Sillitoe

21. www.ip4inno.eu ip4inno21 International Rules on IP Rights The seize of each of the four rings symbolises the extent on international rules.

22. www.ip4inno.eu I.What is Intellectual Property ? II.Enforcing IP is defending your business assets... III.When and how should you enforce IP? IP infringement (civil and criminal) Other situations and options IV.Legal consequences of IP infringements What is at stake? (liabilities & remedies) V.Taking decisions under different infringement scenarios The owners perspective (avoiding litigation, going to court, customs action) The “alleged infringer’s” perspective An enforcement strategy VI.Workshops: case studies

23. www.ip4inno.eu III. When and how should you enforce IP? When IP enforcement comes into play... What represents an infringement of IP (and what doesn’t)... Differences between civil and criminal infringements... Different options available to enforce your IPRs... What will I know after this section ?

24. www.ip4inno.eu ip4inno24 When do you need to enforce your IP? Safeguarding trade secrets & confidential information Obtaining IP protection IDEA DEVELOPMENT IMPLEMENTATION COMMERCIALIZATION Enforcing IP MARKET Confidentiality agreements / clauses Security measures Filing for patents, utility models, designs, measures to establish copyrights, etc. Filing for trade marks INTRODUCTION

25. www.ip4inno.eu When an infringement of your IPRs takes place… Other moments when you can act to protect your intellectual assets: - when a third party seeks to obtain an IP right which conflicts with one you own… -when valuable confidential information is taken unlawfully… When?... (cont.)

26. www.ip4inno.eu Infringement of IPRs: a “call” for enforcement action IPRs are territorial!! Suing… Requesting police, prosecutors, customs, courts to take action… Seeking an agreement... Not reacting ? YOU HAVE DIFFERENT OPTIONS ! For example..

27. www.ip4inno.eu Private prosecution (civil enforcement) Public prosecution (criminal enforcement) Your IP is being infringed: how do you enforce your rights? To litigate or not to litigate? Going to court: Alternative Dispute Resolution (ADR) Avoid litigating:

28. www.ip4inno.eu What is an infringement of Intellectual Property? Making, using, offering for sale Copying Affixing a confusingly similar sign sale of a patented product using a protected trade mark in advertising Making content available On the Internet importing or exporting of a patented product Selling the product directly obtained by a patented process publishing stocking a product bearing a protected trade mark Distributing Publishing IMITATING A DESIGN Renting Broadcasting copyrighted content without authorization Making a patented product Offering for sale Making, using, offering for sale Copying Affixing a confusingly similar sign use of a patented process using a protected trade mark in advertising Importing a registered design importing or exporting of a patented product Selling the product directly obtained by a patented process publishing stocking a product bearing a protected trade mark Distributing Publishing copying the packaging of a similar product IMITATING A DESIGN Renting Making a patented product Offering for sale

29. www.ip4inno.eu Patent/UMs Law Making, using, offering for sale, selling, importing or exporting of a patented product, or use of a patented process. Making, using, offering for sale, selling, importing or exporting or the product directly obtained by a patented process. TMs Law Affixing a confusingly similar sign for the same or similar goods and/or services bearing a protected TM; offering the goods, putting them on the market ; stocking them; or offering or supplying services there under; importing or exporting the goods under the sign; using the sign in advertising; using well-known TMs for different goods and/or services Design Law Making, using, imitating, importing, exporting, selling, etc. goods having the same appearance or “overall impression” of a protected design/s. Copyright Law Copying, making, publishing, translating, adapting, otherwise transforming, distributing by sale, rental, lending, exporting and importing; publicly displaying or performing, broadcasting, “bootlegging”, putting on the Internet, etc. a protected work of literature, art, music, etc.

30. www.ip4inno.eu Infringing acts Primary (direct) infringement Primary (direct) infringement Secondary infringements Indirect infringement Indirect infringement Contributory infringements Contributory infringements

31. www.ip4inno.eu ip4inno Patent infringement Patentee: right to decide who shall not exploit the invention Limitations: a) amendment or invalidation by the courts; b) improvement invention: need of a license from the earlier patentee; c) requirement to practice the invention (non-voluntary license); d) use by Government for the public interest. 31

32. www.ip4inno.eu ip4inno Patent infringement (cont) Patent: excludes others from exploiting the patented invention. Involves: a) protection against infringement; b) right to assign or license. Infringement: the unauthorized exploitation of the patented invention by a third party. 32

33. www.ip4inno.eu ip4inno Patent infringement (cont.) Types of infringement -Deliberate infringement without attempt to avoid -Deliberate infringement with attempt to avoid -Accidental infringement 33

34. www.ip4inno.eu ip4inno Patent infringement (example) 34 Improver Corporation v. Remington Consumer Products Limited Claimant’s device Alleged infringer’s device

35. www.ip4inno.eu Trade mark infringement A commercial use of an identical or similar distinctive sign for the same or similar goods or services, which is likely to produce confusion on part of the public (in the country where a trade mark is protected). Trade marks with a reputation: (e.g. Coca-Cola): use of an identical or similar sign for both similar and/or dissimilar goods...under certain conditions.

36. www.ip4inno.eu Trade mark infringement (example 1) French TM (for Clothing, Footwear, Headgear) Barn B German TM (for Clothing, Footwear, Headgear) Barna-bee Foto: Mayu Gentile

37. www.ip4inno.eu vs Trade mark infringement (example 2) Marks with a reputation Hypothetical case !!

38. www.ip4inno.eu Designs infringement The use of the registered design in trade The use of a design which produces the same “overall impression” as the registered design on an “informed user”. –For unregistered (community) designs it must be proved that the design has been copied…

39. www.ip4inno.eu Designs infringement (example 1) registered design Givenchy BCBG Source: BVonstyle

40. www.ip4inno.eu Designs infringement (example 2) unregistered design Givenchy BCBG Source: BVonstyle

41. www.ip4inno.eu Copyright infringement ? Providing help or facilities to other persons, also inducement of those persons by third party to use copyright works without copyright holder’s permission Use of copyright works without copyright holder’s permission Direct Indirect

42. www.ip4inno.eu Copyright infringement (example 1) Renting Uploading (making available online) Copy and sell

43. www.ip4inno.eu Copyright infringement (example 2) Software License (for 10 PCs) +5 +2

44. www.ip4inno.eu -Private use -Experimental -Education … When is a third party free to use protected IP? Exceptions Patents TMs Designs -Private use -Informational -Educational -Interoperability Copyright -Non- commercial private or experimental use -Prior-use... -”Fair uses” (own name, indications of quality, kind etc.) -Citation -Non-commercial …

45. www.ip4inno.eu Criminal infringement of IP An intentional act… seeking economical profit… most frequently relates to copyright, designs (“piracy”) and trademark infringement (“counterfeiting”)... has acquired an international dimension... calls for public prosecution... sanctions: fines, imprisonment (but, for example, no “recovery of damages!”). …remember, criminal acts against IP are defined from country to country..

46. www.ip4inno.eu “Piracy” (copyright and designs) “Theft” Unauthorized copying on a large commercial scale Involves many forms, including organized crime Photo: Omar Z

47. www.ip4inno.eu Trade mark “counterfeiting” Unauthorized imitation of branded good Can be non-deceptive and deceptive Involves various types of goods and brands and required an organized supply chain Source: fakesareneverfashion.com

48. www.ip4inno.eu Other moments when you can take action to defend your intellectual assets: To stop and eliminate conflicting applications and registrations To avoid confidential information to be taken unlawfully…

49. www.ip4inno.eu Patents: when should a company go to the PTO? -To dispute the validity of a patent (post-grant opposition: national procedures in some countries; European patents at the EPO) -To oppose to the registration of a patent, after publication, while the application is still pending (some countries; e.g. Germany) - To stop (cont) … Patent oppositions

50. www.ip4inno.eu Patents: opposition procedure at the European Patent Office (post-grant) Notice - Within 9 months of the grant - By third parties - Based on lack of novelty / inventive step / insufficient disclosure Notice - Within 9 months of the grant - By third parties - Based on lack of novelty / inventive step / insufficient disclosure Examination Invitation to parties to file observation Communication to the owner Decision: -revocation, -maintainance, -amendments. Decision: -revocation, -maintainance, -amendments. Appeal 2 months Amendments to the patent

51. www.ip4inno.eu When should a company go to the PTO? When registration of a conflicting TM is still pending → try to oppose When a conflicting TM has been registered → try to cancel that registration To stop (cont) … Trade mark oppositions and cancellations

52. www.ip4inno.eu CTMs: oppositions and cancellations at the OHIM

53. www.ip4inno.eu To avoid trade secrets and confidential information to be taken… Misappropriation of trade secrets, know-how that belongs to a company Breach of confidentiality issues

54. www.ip4inno.eu Breach of confidence: (example) Company A (production of car tyres) Company B (production of car tyres) Employee switches jobs and uses his previous know-how on the chemical composition of car tyres

55. www.ip4inno.eu Overview I.What is intellectual property ? II.Enforcing IP is defending your business assets III.When and how should you enforce IP? IP infringement (civil and criminal) Other situations and options IV.Legal consequences of IP infringements What is at stake? V.Taking decisions under different infringement scenarios The owners perspective The “alleged infringer’s” perspective An enforcement strategy VI.Workshops: case studies

56. www.ip4inno.eu IV. Legal consequences of IP infringements What are the legal consequences of civil, criminal infringements? What remedies can an IP owner ask for? What will I know after this section ?

57. www.ip4inno.eu What is at stake? The infringer’s liability and the IP owner’s action infringement liability sanctions (goal) criminal liability civilprivate prosecution civil courts public prosecution criminal courts - compensation to owner - stop the infringement - deter criminal action - stop infringements

58. www.ip4inno.eu What is at stake? (cont.) What remedies/sanctions can IP owner ask for? Civil “Urgent” action Final Criminal Preliminary injunction, detention, arrest of bank account, collection of information, measures to collect proof… Compensation (damages, loss of profit), injunctions, seizure, destruction, publication of court’s decision, attorney’s fees… Arrest, fines, confiscation, destruction, imprisonment..!

59. www.ip4inno.eu Which remedies to ask for (discussion) A company sues another company for selling fake bags with its protected trade mark A company considers to sue another company which, as it strongly suspects, uses its software illegally ? ?

60. www.ip4inno.eu I.What is Intellectual Property ? II.Enforcing IP is defending your business assets... III.When and how should you enforce IP? IP infringement (civil and criminal) Other situations and options IV.Legal consequences of IP infringements What is at stake? (liabilities & remedies) V.Taking decisions under different infringement scenarios The owners perspective (avoiding litigation, going to court, customs action) The “alleged infringer’s” perspective An enforcement strategy VI.Workshops: case studies

61. www.ip4inno.eu V. Taking decisions under different infringement scenarios Taking decisions under different infringement scenarios... practical considerations to make when your IP is being infringed (first steps, to settle or to litigate?...) alternatives to litigation... going to court: pros and cons... what “customs action” is, and how to benefit from it... how to defend yourself if you are accused of IP infringement... tips for the development of an “infringement strategy”. What will I know after this section ?

62. www.ip4inno.eu Infringement scenarios A company’s IP is infringed A company is accused of infringement The “right holder’s scenario” The “alleged infringer’s scenario”

63. www.ip4inno.eu The right holder’s scenario: First steps after learning about an infringement

64. www.ip4inno.eu The right holder’s scenario Initial considerations Seeking legal advice: communicating with your lawyer Can you sue? Validity of owned IP and available defences for the counterpart Can you prove it ? Is it worth the cost to litigate? What are the alternatives? Other things to consider

65. www.ip4inno.eu The right holder’s scenario (cont.) Approaching the infringer Infringer Warning Letter “Cease and Desist” Letter “Surprise” raid Making a phone call or a visit

66. www.ip4inno.eu Risks and opportunities to assess Risks and opportunities to assess The right holder’s scenario (cont.) What is the next decision? To settle or to litigate? Which action ?  infringer’s reaction & strength  availability of proof  resources to collect additional proof, if needed  likelihood of success, if litigating  relief; damages recoverable  costs  liquidity and fiscal status  time  publicity (welcome, not welcome)  strength of the IP  effects on reputation

67. www.ip4inno.eu Settlement negotiations and processes (ADR) Settlement agreement Enforcing settlement agreement The right holder’s scenario (cont.) The strategy to “settle”

68. www.ip4inno.eu ip4inno68 The most commonly used ADR methods: Arbitration Negotiations Mediation Advantages of ADR: Single procedure Party autonomy Neutrality Expertise Confidentiality Finality and enforceability of awards (arbitration) The right holder’s scenario (cont.) ADR – Methods and advantages

69. www.ip4inno.eu ip4inno69 Arbitration is consensual The parties choose the arbitrator(s) The decision of the arbitral tribunal is final and easy to enforce Source: WIPO The right holder’s scenario (cont.) Arbitration

70. www.ip4inno.eu ip4inno70 Litigation vs. Arbitration Common features of IP disputes Court litigationArbitration International Multiple proceedings under different laws, with risk of non homogeneous results Possibility of actual or perceived home court advantage of party that litigates in its own country A single proceeding under the law determined by parties Arbitral procedure and nationality of arbitrator can be neutral to law, language and institutional culture of parties Technical Decision maker might not have relevant expertise, but expert advice can always be asked for Parties can select arbitrator(s) with relevant expertise Urgent Procedures often drawn-out Injunctive relief available in certain jurisdictions Arbitrator(s) and parties can shorten the procedure WIPO Arbitration may include provisional measures and does not preclude seeking court-ordered injunction Require finality Possibility of appealLimited appeal option Confidential/trade secrets and risk to reputation Public proceedings Proceedings and award are confidential

71. www.ip4inno.eu ip4inno71 Non-binding procedure Controlled by the parties Mediator Interest-based procedure The right holder’s scenario (cont.) Mediation

72. www.ip4inno.eu ip4inno72 Requires a common understanding Voluntary Non-binding Can be done with or without legal council Does not require intervention from third parties  Outcome: Can lead to business partnership and/or license agreements. The right holder’s scenario (cont.) Negotiations

73. www.ip4inno.eu ip4inno73 Resolution of domain name disputes: –WIPO Arbitration and Mediation Center Legal framework: –Uniform Domain Name Dispute Resolution Policy Disputes about: –The generic Top Level Domains (gTLDs). Such as “.com”, “.net” and “.org” domains, also more recently introduced gTLDs. and a large number of country code Top Level Domains (ccTLDs).ccTLDs How to file a domain name complaint: –the UDRP Administrative Procedure The right holder’s scenario (cont.) Domain name dispute resolution procedures

74. www.ip4inno.eu ip4inno74 The Domain Name: Is identical or confusingly similar to a trademark or service mark The registrant has no rights or legitimate interests Has been registered and is being used in bad faith The right holder’s scenario (cont.) Criteria for using the URDP administrative procedure

75. www.ip4inno.eu ip4inno75 The Domain Name: Is identical or confusingly similar to a trademark or service mark The registrant has no rights or legitimate interests Has been registered and is being used in bad faith The right holder’s scenario (cont.) Criteria for using the URDP administrative procedure

76. www.ip4inno.eu ip4inno76 Advantages of the UDRP Administrative Procedure Use of the Procedure and taking the dispute to court Disputes involving a domain name registered in a country-code top-level domain (such as.br,.uk,.gt) Use of the UDRP Administrative Procedure to bring a case against someone who has threatened to sue a domain name holder Questions about confidentiality of the Administrative Procedure How to submit a Complaint The right holder’s scenario (cont.) Relevant aspects of the procedure

77. www.ip4inno.eu ip4inno77 The WIPO Arbitration and Mediation Center Mediation Arbitration Expedited Arbitration Expert Determination The WIPO Rules –appropriate for all commercial disputes –contain provisions on confidentiality –technical and experimental evidence that are of special interest to parties to intellectual property disputes

78. www.ip4inno.eu Choice of a court Writ of claims Opponent’s defences Urgent measures to ask Paying court fees The right holder’s scenario (cont.) Going to court

79. www.ip4inno.eu Pros Binding Can be appealed Covers civil and criminal Wide evidence submission Quicker to apply interim measures Extensive use of attorneys Public (in a courtroom) Cons Time-consuming Lengthy IP rights can be questioned or declared invalid Risk of bad publicity No selection of judges No specialization of judges (in some jurisdictions) The right holder’s scenario (cont.) Pros and Cons of litigation

80. www.ip4inno.eu Attorney’s costs Court expenses Costs for experts/specialists Translation costs The right holder’s scenario (cont.) The costs of litigation

81. www.ip4inno.eu Customs Action = seizure of infringing goods (which are imported or exported) by the custom authorities at the Community’s borders On the basis of an IP owner’s application Ex-officio action by customs authorities The right holder’s scenario (cont.) Customs action

82. www.ip4inno.eu Submitted by the IP right holder To competent customs authorities Together with proof of IP rights Together with a description of original goods Specifying information on fake goods (if known) Together with a declaration to cover damages (if applicable) Valid for 1 year No fees required The right holder’s scenario (cont.) Filling out the customs application

83. www.ip4inno.eu Customs seize goods Customs inform holder of seized goods Customs inform IP owner Decision by a competent authority/ court 10/20 working days IP owner requests information about seized goods, drafts a request for a court and requests the court to start proceedings The right holder’s scenario (cont.) The procedure in a customs action

84. www.ip4inno.eu Contact a lawyer Ask the right questions and provide the right documents Consider risks and opportunities in all actions Seek to curtail costs and settling out of court Know the pros and cons of litigation before you engage in a law-suit Impede access of counterfeits and pirate products using effective customs action The right holder’s scenario (cont.) A final checklist

85. www.ip4inno.eu The alleged infringer’s scenario: So you are accused of infringment... First steps: -Again...seek for legal support -Check the validity of the claim -Look for documentary support -Do not disregard warnings !

86. www.ip4inno.eu Main defences: invalidity of the claim authorisation to use the IP exempted use invalidity of the right (counterclaims) exhaustion violation of competition/anti-trust rules The alleged infringer’s scenario (cont.) Defences

87. www.ip4inno.eu “I didn’t know”… “I didn’t realise I was infringing”… Is ignorance a valid defence? The alleged infringer’s scenario (cont.) Defences

88. www.ip4inno.eu Independent creation Exempted use The alleged infringer’s scenario (cont.) Defences (copyright)

89. www.ip4inno.eu Grant Opposition Defence in infringement suit or nullity action Grounds for counterclaims (nullity): -not subject matter -not novel -no inventive step -insufficient disclosure Grounds for counterclaims (nullity): -not subject matter -not novel -no inventive step -insufficient disclosure The alleged infringer’s scenario (cont.) Counterclaims (patents)

90. www.ip4inno.eu Publication Opposition (3 m.) - Cancellation OHIM - Counterclaim in infringement proceedings - Objection in infringment procedures Grounds for counterclaims: -invalidity -insufficient use -protectability Grounds for counterclaims: -invalidity -insufficient use -protectability Grant The alleged infringer’s scenario (cont.) Counterclaims (trade marks)

91. www.ip4inno.eu Are you infringing the right? If not, can you prove it? Can you bear the costs of litigation? What are your chances to fight back? Can you license the IP of the claimant? The alleged infringer’s scenario (cont.) Final checklist

92. www.ip4inno.eu Developing an enforcement strategy Defending IP rights is most effective if you develop an enforcement strategy …

93. www.ip4inno.eu Developing an enforcement strategy (cont.) Things to consider: (1)Assessing one’s IP rights (2) Taking preventive measures –to avoid infringements by others of one’s IP rights (security measures, non-disclosure agreements, etc.) –to avoid infringing other’s IPRs (3) Monitoring the market for possible infringements of owned IP

94. www.ip4inno.eu Things to consider: (4) Choosing the procedures which will be carried out to enforce rights (5) Anticipating a budget for infringement enforcement litigation –you may also consider getting patent insurance! (6) Setting parameters for enforcement using cost/benefit risk assessment (7) Before litigating …consider all your options! Developing an enforcement strategy (cont.)

95. www.ip4inno.eu ip4inno 95 Infringement avoidance strategies Developing an enforcement strategy (cont.) records policies staff training protocols clearing

96. www.ip4inno.eu ip4inno FTO searches A freedom to operate search examines the claims language of third-party in-force patents. The FTO is typically conducted as due diligence to assess the risk of potential infringement. 96 Developing an enforcement strategy (cont.) Freedom to Operate searches

97. www.ip4inno.eu Based on such insurance, an inventor or a third party may receive compensation for losses incurred if either infringement or accusation of infringement happens. Photo source: http://www.rapidmonitoring.com/patent- monitoring Developing an enforcement strategy (cont.) What is patent insurance?

98. www.ip4inno.eu I.What is Intellectual Property ? II.Enforcing IP is defending your business assets... III.When and how should you enforce IP? IP infringement (civil and criminal) Other situations and options IV.Legal consequences of IP infringements What is at stake? (liabilities & remedies) V.Taking decisions under different infringement scenarios The owners perspective (avoiding litigation, going to court, customs action) The “alleged infringer’s” perspective An enforcement strategy VI.Workshops: case studies

99. www.ip4inno.eu ip4inno You are a trainee lawyer in a SME called “MELINDODA” located in Marseille, France, which is faced to some problems regarding its IP ; you have to help the managing director, Mr. Melindo, to take decisions. This firm sales professional photograph tools that have been created during summer 2005. The CEO, Mr. Melindo, who comes from Naples, has registered the European trademark MELINDODA the same year. This creative mind has developed a product he has named “Melindodina” and which consists of a camera that allows to develop instantaneously three-dimensional photos, using a technical process developed by M. Melindo himself. A patent, registered in several countries, including France and Spain, was granted for this invention in October 2006. The invention is manufactured and successfully sold around Europe. For commercial and visibility purposes, the firm launched a website, whose name has been registered in January 2007 : “www.melindoda.fr”.www.melindoda.fr 99 Workshop 1 Facts

100. www.ip4inno.eu ip4inno100 Due to the economic growth of his activities Mr. Melindo wanted to register the extension “.com” for his website. He was very surprised when he discovered that the domain name was already registered by one of his former -employee (who was dismissed for professional misconduct and who was always in trouble with other employees). Mr. Melindo immediately thought that this person registered the domain name in order to trouble Melindoda. Unfortunately, it was not the last surprise Mr. Melindo was faced to: He was totally disappointed when, surfing on the World Wide Web, he discovered that a firm named “Transferico Ltd”, located in Madrid, manufactures and sells exactly the same invention as Melindodina, using a similar process, but under another name, “Camedesign”. 100 Workshop 1: problems

101. www.ip4inno.eu ip4inno101 1. What are the IP Rights involved in this case ? 2. How can you qualify the behavior of the ex-employee who registered the domain name “.com” ? What are the possibilities offered to Mr. Melindo to recover the domain name “melindoda.com” ? Workshop 1: questions

102. www.ip4inno.eu ip4inno102 1 What are the IP Rights involved in this case ? Patent Internet domain name 2. How can you qualify the behavior of the ex-employee? What are the possibilities to recover the domain name “melindoda.com”? Cyber squatting Solutions: –find an agreement –going to court –UDRP

103. www.ip4inno.eu ip4inno103 3. Do you think that Transferico Ltd should patent its invention “Camedesign” ? Why ? 4. What can Mr. Melindo do to enforce his rights regarding his patented invention “Melindodina” ? 103 Workshop 1: questions

104. www.ip4inno.eu ip4inno104 3 Do you think that Transferico Ltd should patent its invention “Camedesign” ? Why ? Probably not, because of the lack of novelty of its invention 4 What can Mr. Melindo to enforce his rights regarding his patented invention “Melindodina” ? The owner has to enforce his rights: –by taking provisional and precautionary measures –via a legal action (probably civil) –using ADR methods

105. www.ip4inno.eu ip4inno105 5 Mr. Melindo doesn’t want to go to court, try to find some reasons of his refusal ? 6 On a strategic commercial point of view, what alternative dispute resolution could be of interest to Mr. Melindo ? 105 Workshop 1: questions

106. www.ip4inno.eu ip4inno106 5 Mr. Melindo doesn’t want to go to court, try to find some reasons of his refusal ? Most of the time, going to court: Engages the firm in long procedures Is costly Is not confidential Gives a bad publicity to the business Gives uncertain results 6 On a strategic commercial point of view, what alternative dispute resolution could be of interest to Mr. Melindo ? Negotiations –the outcome can lead to a business partnership and/or a license agreement

107. www.ip4inno.eu Workshop 2 Customs action Facts: The company Melindoda has a registered Community Trade mark “Melindoda” for photograph tools. Being cautious, the company submitted an application for customs action within the Community 6 months ago. Two days ago the company received a phone call from the Polish customs officer. The officer explained that they had just stopped a freight composed of some photograph tools imported from a non-EU country which looked irregular. The goods were labelled with a similar trade mark to the one registered by Melindoda. The officer explained that they found Melindoda’s contact details by checking the EU customs database.

108. www.ip4inno.eu Questions: 1. What rights are involved in this case? 2. What is the basis for any further Melindoda’s actions? 3. What are the concrete steps Melindoda should take? Workshop 2: questions

109. www.ip4inno.eu Question 1: What rights are involved in this case? Answer: -Registered Community Trademark (“Melindoda”) - Valid within the whole Community (27 Member States) - Seized goods allegedly infringe Melindoda’s rights to brand photograph tools with its registered trade mark and to import them Workshop 2: answers

110. www.ip4inno.eu Question 2: What is the basis for any further actions? Answer: -The basis for any further action is Melindoda’s customs application submitted 6 months ago - Melindoda should react promptly: only 10 (to 20) days to initiate court proceedings! Workshop 2: answers

111. www.ip4inno.eu Question 3: What are the concrete steps Melindoda should take? Answer: - Make a call and talk to the customs officer - Ask the customs officer to provide more information (written) on the seized goods - Ask him to provide information about consignor of goods or other people involved (if seen from documents) - Start preparing a request to the court to start proceedings and submit it within 10 days - Option: start parallel negotiations with the infringer Workshop 2: answers

112. www.ip4inno.eu Thank you for your attention!

113. www.ip4inno.eu Good continuation!