1. Intellectual Property and An introduction to a patent strategy webinar ALLILONnet 21 July Dr. Dimitris Kouzelis Director, European Patent Office
14/06/2018

2. Intellectual Property rights The patent system Costs and strategy
Contents
Intellectual Property rights
The patent system
Costs and strategy
Contact 2

3. Intellectual Property (IP) rights
What for?
How?
Patents
Inventions = solutions to technical problems
Application and
examination
Copyright
Original, creative or artistic forms (literary texts, music)
Exists
automatically
Trade marks
Distinctive identification of products and services
Use and/or
registration
Registered designs
External appearance
Registration
Geographical Indication
Product of particular area
Exam. by national authority
Trade secrets
Valuable information not known to the public
Reasonable efforts
to keep secret

4. One product = multiple patents and other IP rights
1 500 to patents Data-processing methods, semiconductor circuits,
chemical compounds, etc.
Registered design Shape of phone
Registered trade marks Brand name, start-up tone
Copyright Software, ringtones and images
smart phone +
Smart phone

5. Industries with higher than average use of IPR contribute:
IP intensive industries in Europe (source IP intensive industries in the EU, sep13)
Industries with higher than average use of IPR contribute:
40% of the economic activity in Europe
35% of employment
+ 40% average remuneration (high added value)
90% of exports

6. IP intensive industries in Europe (source IP intensive industries in the EU, sep13)

7. Intellectual Property rights The patent system Costs and strategy
Contents
Intellectual Property rights
The patent system
Costs and strategy
Contact 7

8. The Balance of the patent system
EXCLUSIVE RIGHTS
TO OWNER
by preventing third parties from exploiting
the invention for commercial purposes without authorisation
Valid for max. 20 years
REVEAL
TO THE PUBLIC
by making the detailed description of the invention available to everyone
18 months after filing
PATENTS

9. An incentive for economic growth
Makes the latest technological knowledge available to the public
Inspires further innovation
Prevents duplication of R&D
in industry and universities
Encourages business by helping identify
new partners and allowing licensing
Gives patent holders time to recoup their
development costs from the commercial
exploitation of the invention

10. Intellectual Property rights The patent system Costs and strategy
Contents
Intellectual Property rights
The patent system
Costs and strategy
Contact 10

11. Three possible geographical scopes
Route
Via
Valid in
In brief
NATIONAL
Οργανισμος Βιομηχανικής Ιδιοκτησίας (ΟΒΙ)
One country (GR)
Filed with OBI
In Greek
Cheap
EUROPEAN
European Patent Office or
national office (OBI)
40 countries
One single application for 40 countries
Same legal effects as national patents
After grant they become national patents
INTERNATIONAL
International Bureau
National office (OBI)
Up to 147 countries
(EU, USA, JP, China...)
An international patent filing procedure
After the international phase, applicants can enter the national/regional phase in various states
More costly, late payments

12. Three routes to go Abroad
simple
EUROPEAN ROUTE
Direct European application (at OBI or EPO)
Other applications (USA, JP...)
< 12 months
EUROPEAN
SEARCH
AND
EXAMINATION
PROCEDURE
NATIONAL + EUROPEAN ROUTE
cheap
European application
National
application (OBI)
Other applications (USA, JP...)
< 12 months
NATIONAL + INTERNATIONAL + EUROPEAN ROUTE
delay
payments
National
application (OBI)
Applicant files an
International
application
European phase
USA
JP, China...
< 12 months
< 28 months

13. Costs for a European Patent
Filing
Search
Examination
Grant
Opposition
Appeal
year 1: €
year of grant: 1000 €
year 2: 1500 €
year 3: 500 €
year 4: 600 €
year 5: 800 €
TOTAL EPO FEES
< €

14. TOTAL EPO FEES < 6.000 € Costs after grant year after grant ?
Filing
Search
Examination
Grant
Opposition
Appeal
TOTAL EPO FEES
< €
year after grant ?
 National Patents
 In many countries
 Many translations
 Very high costs

15. How to lower patent costs
Start with a good draft
Find a good attorney, negotiate fees
File first national : 350 euro
Put the patent in the market (e.g.
Get a quick search report, analyse it
Define strategy on the basis of the market
Do not miss the 12 months limit: Apply abroad
Delay grant
Wait for the Unitary Patent
Find partnerships, including Capital
Work in patent pools

16. Mistakes to avoid Speak or publish early before filing
without "Non-Disclosure Agreement"
"Re-invent the wheel"
Check
Infringe others' IP Rights
Regional Electronic libraries (Thessaloniki, Heraklio)

17. THANK YOU Contact Dr. Dimitris Kouzelis dkouzelis@epo.org +31642801198
Visit

18. Unitary patent: Concrete benefits
Protection in one single step for the 25 states currently participating
Simplified registration procedure instead of 25 different validations
Simplified and cost-effective renewal fee payment
No post-grant translation required (after initial transition period)
Centralised register maintained by the EPO
Uniform litigation system affording greater legal certainty

19. Language arrangements for post-grant translations
For a transitional period of up to 12 years:
If the patent is granted in French or German, a translation into English will be required
If the patent is granted in English, a translation into one of any of the EU languages will be required
At the end of the transitional period:
No translation required anymore
Patent Translate will provide free machine translation in 32 languages

20. The Unified Patent Court
COURT OF APPEAL
with seat in Luxembourg
COURT OF JUSTICE
OF THE
EUROPEAN UNION
Requests
for
preliminary
rulings
Appeals
COURT OF FIRST INSTANCE
CENTRAL DIVISION
LOCAL DIVISIONS
REGIONAL DIVISIONS
set up in individual member states
set up by groups of member states
Seat in
Paris
Office of
President
Section in
Munich
Section in
London LD LD LD LD RD RD LD LD RD LD RD LD
Revocation actions
Infringement actions

21. When will it all start?
European applications already "in the pipeline" today might be given unitary effect if granted after the system starts
Minimum of 13 states - including UK, France, Germany - must ratify the agreement on a Unified Patent Court (expected 2015)
First unitary patents will cover only the states which have ratified the agreement, then more as states accede