Practical Advice For International Patenting

Transcription

1 Practical Advice For International Patenting A Presentation For The NAPP Annual Conference July 30, 2016

2 Overview 1. Filing strategies 2. Drafting tips 3. IP in Europe 4. EPO practice tips 5. Brexit

3 Introduction PART 1 Filing strategies

4 Filing strategies The goal is to maximize return on investment having due regard for the client s risk tolerance and budget Unfortunately, there are a lot of variables.

5 Filing strategies Pick countries based on: patenting costs market size e.g. Luxembourg vs. Germany enforceability e.g. Israel vs. Egypt location of competitors etc.

6 Filing strategies Don t just think patents! patents designs utility models Nearly 600,000 utility model applications were filed in China in But only 0.7% were of foreign original.

7 Filing strategies Be aware of differences. Investigate your client's needs; tweak your strategy. An example: the Germany PTO allows utility model and utility patent protection regardless of filing path (PCT, EPO, DPMA). the SIPO only allows a utility model parallel to a utility patent if filed nationally on the same day.

8 Filing strategies Another example: the EPO is notoriously strict about amendments the German PTO, like the USPTO, rarely voices new matter objections If you think major amendments may be required to gain allowance, it may be prudent to pursue a German national patent via the German PTO.

9 Filing strategies Another example: Two images from a single EUIPO design filing

10 Filing strategies A foreign (patent) application can be filed in many ways: global PCT regional EPO, Eurasian, ARIPO national UKIPO, DPMA, SIPO, JPO In general, you may mix and match systems.

11 Filing strategies The PCT is a lot more valuable and cost effective than you might think.

12 Filing strategies You drafted that application with such care. Why have it rephrased by someone lacking both legal and technial expertise? Foreign law firms rely on a wide variety of sources for their translations. Don t expect translations to be done by a patent attorney.

13 Filing strategies Even the best possible translation will inevitably be imperfect. Even for closely related languages, it s like having to replace every tenth word by an alternative (think thesaurus).

14 Filing strategies I m gonna live til I die I m gonna laugh stead of cry (cry ==> schreien ==> scream) Attention: For security reasons the kickstool cannot be disassembled after assembly. blown coal ired Secure to handle.

15 Filing strategies Sicher in der Hand. (Sits well in your hand) Secure to handle. безопасность в обращении (safe (literally not dangerous ) in handling)

16 Filing strategies Filing a foreign national application in a foreign language bears the risk of translation errors. The scope of a PCT national phase application is defined by the originally filed PCT application.

17 Filing strategies Cost efficiency example: If the EPO is ISA, there is no search fee upon EP regional phase entry. You can enter the EP regional phase early, accelerate examination and often negotiate allowance (e.g. for PPH) prior to the 30-month deadline.

18 Drafting tips PART 2 Drafting Tips

19 Drafting tips See my presentation from last year!

20 Drafting tips No text in figures!

21 Drafting tips Do not use the word invention in the specification except where you mean the actual subject matter of the claims. I use the term present disclosure.

22 Drafting tips Avoid specialized terminology. dual-mode burst transmitter lantern gear client / server Use words your grandmother would know.

23 Drafting tips Make every dependent claim dependent from every preceeding claim from which it can logically be dependent.

24 Drafting tips 1. A widget. 2. The widget of claim 1 3. The widget of claim 1 or 2 4. The widget of any one of the preceeding claims wherein the widget is red. 5. The widget of any one of claims 1-4 wherein the widget is blue.

25 Drafting tips PART 3 IP in Europe

26 IP in Europe EPO EUIPO UPC

27 IP in Europe EPO = European Patent Office Just patents. Grant and opposition only. Munich, The Hague, Berlin Supranational organisation. 38 Member States.

28 IP in Europe Image from epo.org

29 IP in Europe EUIPO = EU Intellectual Property Office* No patents. Design and trademarks only. EU authority = 28 Member States Alicante, Spain *Previously called OHIM = Office of Harmonisation in the Internal Market

30 IP in Europe Image from europa.eu

31 IP in Europe UPC = Unified Patent Court* Patent nullification & litigation courts Supranational court system Open only to EU countries Coming soon?

32 EPO practice tips PART 4 EPO practice tips

33 EPO practice tips David s pet peeve: essential features EPO Guidelines F-IV, 4.5

34 EPO practice tips David s solution: Although exceptions may exist, Applicant generally considers the notion of missing essential features to be a misconception. In particular, Applicant does not recognize how the EPC can be interpreted as empowering the Examining Division to subjectively dictate what features must be incorporated into a claim. In accordance with established case law of the EPO, solely those features that are necessary for solving the technical problem are to be regarded as essential features. It is likewise established case law of the EPO that the claimed features as freely chosen by an Applicant (Art. 113(2) EPC) constitute the sole basis for determining the objective technical problem used for assessing the inventive step of the claimed invention. It follows from the above that solely an Applicant's choice of features dictates what is essential and what is not. In other words, if a claim fails to cite particular "essential" features necessary for solving a particular technical problem, then this is a question of inventive step (Art. 56 EPC), not a deficiency with respect to Art. 84 EPC. That is to say, if a claim fails to cite particular "essential" features necessary for solving a particular technical problem, then that problem should simply be disregarded in the Examining Division's assessment of the inventive step of the respective claim. In particular, Rule 43(3) EPC is not to be interpreted as overriding Applicant's rights as secured in higher-ranking Art. 113(2) EPC. Naturally, e.g. in the case where an Applicant has argued that a particular technical problem is solved by the claimed invention although it is not, it may be appropriate for an Examining Division to indicate, as a courtesy, that essential features are missing for solving that problem in addition to raising an appropriate objection under Art. 56 EPC.

35 EPO practice tips Adapting the specification to the amended claims

36 EPO practice tips no need for major revision! throughout the specification, replace the word invention by the term present disclosure insert David s secret sauce into the beginning of the Summary section

37 EPO practice tips David s secret sauce: The present invention provides a widget in accordance with independent claim 1, a method of widgeting in accordance with independent claim 5 and a computerreadable storage medium in accordance with independent claim 8. Preferred embodiments of the invention are reflected in the dependent claims. The claimed invention can be better understood in view of the embodiments described and illustrated in the present disclosure, viz. in the present specification and drawings. In general, the present disclosure reflects preferred embodiments of the invention. The attentive reader will note, however, that some aspects of the disclosed embodiments extend beyond the scope of the claims. To the respect that the disclosed embodiments indeed extend beyond the scope of the claims, the disclosed embodiments are to be considered supplementary background information and do not constitute definitions of the invention per se.

38 EPO practice tips Addressing a request to use the two-part form

39 EPO practice tips incorporate an acknowledgement of the closest prior art into the introductory portion of the specification insert David s secret sauce into response letter to EPO

40 EPO practice tips A surefire method to acknowledge the closest prior art if the EPO has not mischaracterized it in their Communication: Further information pertaining to the prior art can be found in US 2012/ that has been interpreted by the EPO as disclosing a widget comprising [copy features cited in Communication as being known from said document].

41 EPO practice tips David s secret sauce: In view of the numerous distinctions between the teachings of D1 and the subject matter of claim 1 as discussed in item 5 infra, Applicant believes that use of the two-part form would lead to an inordinately lengthy and complex claim and has consequently chosen to retain the one-part form. Having regard for Applicant's aforementioned acknowledgement of the cited prior art in the introductory portion of the specification, however, Applicant trusts that the reader will have no difficulties discerning those features of the claims that are known from the prior art and consequently kindly requests that the Examiner not insist upon use of the two-part form.

42 Brexit PART 5 Brexit

43 IP in Europe Image from epo.org

44 IP in Europe Image from epo.org

45 IP in Europe Image from europa.eu

46 IP in Europe Image from europa.eu

47 IP in Europe Image from europa.eu

48 Thank you for your attention! Feel free to call me with any questions.