1. Dr. Michael Berger, European Patent Attorney © Michael Berger 03.06.2010 Intellectual Property (IP): Patents for Inventions

2. Intellectual Property (IP) Technical protective rights: Patents Utility patents Semiconductor Protection Nontechnical protective rights: Design Patents Trademarks Plant Variety Protection NewScope Group © Michael Berger 03.06.2010

3. Trademarks…

4. A patent is a set of exclusive rights granted by a state to an inventor or his assignee for a limited period of time in exchange for a disclosure of an inventionexclusive rightslimited period of time invention Patent applications are possible for: Products (devices etc.), methods, medical use… What is a patent? NewScope Group © Michael Berger 03.06.2010

5. exclusive rightsexclusive rights: commercial use only through the inventor or his assignee and/or his licensee(s) limited period of timelimited period of time: 20 years from the filing date InventionInvention: as defined in the claims; must be novel and inventive over the prior art and be industrially applicable to be granted as a patent; must be sufficiently disclosed NewScope Group © Michael Berger 03.06.2010

6. Novelty… - Keep the invention secret prior to filing !!!!! After filing… - Could be advantageous to keep the invention secret until patent application is published if there are related inventions which will be filed at a later stage

7. Patent claims: Claims define in the most abstract form what the inventor regards to be the invention in respect to what forms the (known) prior art. NewScope Group © Michael Berger 03.06.2010

8. Claim Example 1. A plastic drink bottle having two closed internal compartments, said closed internal compartments being able to hold a first drinking fluid and a second drinking fluid, such that a user may access said first drinking fluid independent of said second drinking fluid. (taken from US 2009020541 A1 ) NewScope Group © Michael Berger 03.06.2010

9. …other embodyments covered by the claims - A plastic drink bottle having two closed internal compartments - said closed internal compartments being able to hold a first drinking fluid and a second drinking fluid - such that a user may access said first drinking fluid independent of said second drinking fluid

10. A patent is an object of great value. The value is thereby dependent on the scope of the patent and the territorial extent of the patent family. NewScope Group © Michael Berger 03.06.2010

11. How to obtain a patent 1.filing a patent application at national (e.g. UKPTO, USPTO, DPMA) or regional Patent Offices (e.g. EPO) (preliminary protection after opening of the patent application to the public / 18 months after filing) 2.Request examination of the patent application 3.If the requirements for granting a patent (e.g. novelty, inventive step) are fulfilled a patent will be granted (full protection - exclusive rights in force) NewScope Group © Michael Berger 03.06.2010

12. International Patent Filing a) Traditional patent systems: Local patent application followed within 12 months by multiple foreign applications claiming priority under Paris Convention: – multiple formality requirements – multiple searches – multiple publications – multiple examinations and prosecutions of applications – translations and national fees required at 12 months -> decision on national filings and high costs 12 months after first filing NewScope Group © Michael Berger 03.06.2010

13. Traditional filing system - TIMELINE (simplyfied) National/Regional/ filing (priority date) National /Regional publications National / Regional filings claiming priority (months) 012 18 NewScope Group © Michael Berger 03.06.2010

14. b) PCT (Patent Cooperation Treaty) system First patent application is followed within 12 months by international application under the PCT, claiming Paris Convention priority – one set of formality requirements – international search – international publication – international preliminary examination (IPE) – international application can be put in order before national phase – translations and national fees required at 30 months*, and only if applicant wishes to proceed Advantage: – “national phase” commencing at 30 months*; -> high cost effort for national filings” 30 months after first filing instead of 12 months after filing -> 30 months time after first filing for decision on national filings *A few States apply a 20-month time limit where no demand for international preliminary examination has been filed before the expiration of 19-month period NewScope Group © Michael Berger 03.06.2010

15. PCT TIMELINE (simplyfied) NewScope Group © Michael Berger 03.06.2010 National/Regional/ PCT filing/ (priority date) PCT filing International search report (ISR) and written opinion (WO) of ISA International publication National phase entry (months) 0121618222830 IPRP established 2 months from ISR: filing of claims amendments (optional) Filing of demand (IPE)

16. NewScope Group © Michael Berger 03.06.2010 PCT Contracting States* (142 on 1 May 2010) * For a detailed list please see http://www.wipo.int/pct/en/list_states.pdfhttp://www.wipo.int/pct/en/list_states.pdf

17. Last but not least, think about if there is a market for the product to be patented… NewScope Group © Michael Berger 03.06.2010 Source: EPO poster “ The seven deadly sins of the inventor”

18. Thanks ! NewScope Group © Michael Berger 03.06.2010