IP protection and patent filing strategies: an overview

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1 IP protection and patent filing strategies: an overview Alberto Di Consiglio, EPFL -TTO Cluj,

2 A real life example You have a technology and you want to find a industrial partner Partners usually want IP + Proof of Concept or a Prototype What are the options for a negotiation while shading yourself against possible leakage of information regarding your invention, and possibly reduce costs of all operations? Non-disclosure agreement (NDA) Risky infringement of an NDA is discussed before national courts with variable outcomes if the negotiation does not terminate with an agreement among the parts, you never know what others will do with the disclosed information

3 Alternative: Filing a patent application - the strongest tool PROs: Protects an inventor/applicant against any issue (information leakage, publications, involuntary disclosures etc.) 20y protection from the date of filing

4 Definition of a patent A patent is one of the available means to protect intellectual property of an invention A patent is a national, exclusive right to stop others from exploiting (e.g. making, using or selling) the subject matter of an invention (e.g., the invented product or process) It is NOT the right to exploit an invention

5 Definition of a patent A patent is one of the available means to protect intellectual property of an invention A patent is a national, exclusive right to stop others from exploiting (e.g. making, using or selling) the subject matter of an invention (e.g., the invented product or process) It is NOT the right to exploit an invention A strategic tool Provides for credibility before an investor or an industrial partner «psychological» aspects Fosters technologies it rewards an Applicant for the upward research work It can be used as a currency of exchange to improve a business may be sold or licensed and can grants you funds

6 Alternative: Filing a patent application - the strongest tool CONs: COST (filing fees and related fees, attorney fees etc.) HOWEVER It is possible to delay and reduce costs as much as possible by filing a provisional patent application

7 Fixes a filing date Provisional patent application Provisional patent application strictu senso: USPTO 12 months «shading» Can be used to claim priority «self-destroy» after 12 months no actions needed Cheap No formal contraints Use of the phrase Patent Pending to mark products embodying the invention

8 Provisional patent application «Provisional» patent application: EP, PCT Filing of a patent application without paying the official fees required The application will be deemed to be withdrawn However, the content of the application can be used as a basis for claiming priority for a subsequent filing of the same invention Legal basis: Art. 87 EPC ; Art. 4 A.(3) Paris Convention

9 Provisional patent application 1) Any person who has duly filed, in or for (a) any State party to the Paris Convention for the Protection of Industrial Property or (b) any Member of the World Trade Organization, an application for a patent, a utility model or a utility certificate, or his successor in title, shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application. (2) Every filing that is equivalent to a regular national filing under the national law of the State where it was made or under bilateral or multilateral agreements, including this Convention, shall be recognised as giving rise to a right of priority. (3) A regular national filing shall mean any filing that is sufficient to establish the date on which the application was filed, whatever the outcome of the application may be.

10 Provisional patent application The most important issue is the description: 35 U.S.C. 112 (a) The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.

11 Filing a provisional patent application Cost Can the application be used for claiming priority? Do I need a patent attorney for the filing? Are there formal requirements to comply with? US EP PCT Filing Fee $260 ($130 for small entity) ($65 for micro entity) - (filing without paying the required fees) - (filing without paying the required fees) Yes Yes Yes No No No No No No Which languages are admitted? Any Any Any Can I file online? Yes Yes Yes Filing procedure complexity * */*** ***

12 Filing a provisional patent application THE FAQ: can I file a patent application on my own or do I necessarily need a patent attorney? THE reply: you can do it by yourself! US EP PCT 37 C.F.R Art. 133 EPC Art. 9 PCT An unrepresented inventor may file a patent application and prosecute it on his or her own behalf (pro se) (1) Subject to paragraph 2, no person shall be compelled to be represented by a professional representative in proceedings established by this Convention. (2) Natural or legal persons not having their residence or principal place of business in a Contracting State shall be represented by a professional representative and act through him in all proceedings established by this Convention, other than in filing a European patent application; the Implementing Regulations may permit other exceptions. Any resident or national of a Contracting State may file an international application.

13 Filing a provisional patent application - US

14 Filing a provisional patent application - US

15 Filing a provisional patent application - US

16 Filing a provisional patent application - US

17 SB16 Form

18 SB16 Form

19 Filing a provisional patent application - US

20 Filing a provisional patent application - US

21 Filing a provisional patent application - US

22 Filing a provisional patent application - EP

23 Filing a provisional patent application - EP

24 Filing a provisional patent application - EP

25 Filing a provisional patent application - EP

26 Filing a provisional patent application - PCT

27 PCT procedure overview (Usually) filing of a first application at a national office Filing of a single international application, at a single receiving Office, designating all PCT States Patents granted by designated national and regional Offices (months) Priority 0 period 12 Publication 18 International phase 30 International processing, including centralized search, examination and publication National phase added value, improving and facilitating... subsequent national processing

28 PCT decision points (months) Should I file a national patent application? 0 $ Priority period Should I file applications abroad? Should I file a PCT application? $$ Should I withdraw the application to prevent publication? Should I withdraw the priority claim to delay publication? Publication Should I manufacture or assign or license the invention? Can I find a partner or buyer or licensee? International phase $$ Do I want international preliminary examination to enable amendment of the application before the national phase? 30 Should I enter the national phase in view of: (1) assessment of the prospects of commercial success? (2) likelihood of patent grant? In which countries should I enter the national phase? $$$$$$ (translations, official fees, foreign agents) National phase

29 Filing a provisional patent application - PCT

30 Filing a provisional patent application - PCT

31 Filing a provisional patent application - PCT

32 Filing a provisional patent application - PCT

33 Filing a provisional patent application - PCT

34 Filing a provisional patent application - PCT

35 Filing a provisional patent application - PCT

36 Filing a patent application costs overview US ($) EP (EUR) PCT (EUR) Receiving office: RO Transmittal fee None None 80 Filing fee 280 Fee per sheet 400 (for each additional 50 sheets that exceeds 100 sheets) (online filing) (30% reduction if filed in Romanian*) 15 (For the 36th and each subsequent page) 1,273 (90% reduction) 14 (For the 31st and each subsequent page) (90% reduction) E-filing reductions None Search fee 600 1,285 1,875 (if EPO is ISA) 376 (if RU is ISA and application is filed in EN) *: the applicant must also be one of a small and medium sized enterprise, a natural person, a non-profit organisation, a university or a public research organisation. A translation into an official EPO language (EN, FR or DE) is required.

37 Filing a patent application costs overview US ($) Examination fee 720 Claims fee 80 Each claim in excess of Each independent claim in excess of three 780 (Multiple dependent claim ) EP (EUR) 1,620 (30% reduction if request filed in Romanian*) 235 (For the 16th and each subsequent claim up to the limit of 50) Designation fee None 580 Fee for grant PCT (EUR) Receiving office: RO National Phase National Phase (where applicable) National Phase (where applicable) National Phase (where applicable) *: the applicant must also be one of a small and medium sized enterprise, a natural person, a non-profit organisation, a university or a public research organisation. A translation into an official EPO language (EN, FR or DE) is required.

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40 Unitary European Patent a good compromise

41 Thanks for your attention!

42 Paris Convention member countries