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WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
Patents in the Electronic (and IT) Industries
Olivier Sacroug
European Patent AttorneyKatzarov SA
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
• What is a patent?– “Contract” with the society
• You disclose your invention to the public and, as a counter-part, the government grants you with a 20 years monopoly
– Patents are national/regional• no effects outside their jurisdiction
– Right to exclude others from making, using, offering for sale, selling, importing the invention
– Patents do not provide you with the right to make, use, offer for sale, sell or import your own invention
– Patentee must enforce the patent
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
• Why should I apply for a patent?
– Immediate value• Grants you with a property right on your inventions • Gives you a monopoly on these inventions• Protects your developments, R&D investments• Licensing opportunities
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
• Why should I apply for a patent? (2)
– Indirect value• To help convincing investors / partners• To strengthen your position in negotiations
with partners / competitors
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
• Why are patents particularly important in the Electronic and IT industries
– Copying / reverse engineering is relatively easy
– Very active and “aggressive” environment
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
• Why should I not file patent application in the Electronic and IT industries
– Business is often faster than patent offices
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
WIPO Statistics
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
Source: Trilateral Statistical Report, 2005 edition; jointly produced by the EPO, JPO and USPTO; Edited by the JPO, 2006.
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
• What can I protect with a patent?– Almost any new and inventive technical solution
• Components (filters, connectors, ...)• Composition of matter• Machines (machine tools, electronic equipment,...)• Manufacturing methods• Services (e.g. over telecommunication networks)• Software ?!
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
• Example 1: connector
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
• Example 2: electric filter
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
• Example 3: comp. alignment
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
• Example 4: inspection module
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
• Example 5: billing process
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
• Example 6: single sign-on process
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
• How should I proceed?
– Start early in the development process– Identify the elements of your solution / idea
that bring a real commercial advantage– Depending on the complexity of the project,
be ready to file more than one patent application
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
• Patents are only delivered for NEW inventions
– DO NOT DISCLOSE your invention before you filed a patent application
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
• What is considered as a disclosure?– publication
• article in a journal or a newspaper• flyer• abstract• pre-print• website, blogs, Internet postings• letters, fax, emails• discussion with friends
– public use– offering for sale
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
• What is NOT considered as a disclosure?
– discussions inside the company, in a lab, ...– letters, faxes, emails, discussions , seminars
if they are explicitly covered by aNON-DISCLOSURE AGREEMENT
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
• In case of a disclosure by the inventor
– Grace period– USA, Canada: 1 year– Eurasia: 6 months– Europe, Japan, India and most countries: 0 days
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
• Other forms of IP protection
– Petty patents (utility models, modèles d’utilité, Gebrauchsmuster, etc.): usually more limited in time (5-15 years)
– Designs: protects only the visual aspect– Topography: protects a specific design of an
integrated circuit– Trademarks
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
• Where should I apply for a patent?
– The legal effects of a patent effects are limited to a country or a region
– There are no such things as “international patents”
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
• Where should I protect my invention?
– Own country of development / production – Main competitors’ countries of production– Main markets
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
• Provisional patent application
– Short deadline (before a fair, etc.)– Limited financial resources– Very early stage, details of solution unclear – Extend the life of the patent (pharma)– MUST be transformed within 12 months
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
• International PCT application
– Covers most countries– Postpone strategic decisions (30 months)– Postpone major costs– Search report and possible examination– MUST be transformed into regional/national
patent applications
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
• Direct National/Regional filings
– Cost effective– No modification of the geographical coverage
possible after 12 months from the priority date (date of first filing): requires a well-defined strategy from the start
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
Source: Trilateral Statistical Report, 2005 edition; jointly produced by the EPO, JPO and USPTO; Edited by the JPO, 2006.
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
• Adapted geographical coverage: essential
– A single patent covering one country can be as efficient as several patents covering an entire continent
– If neither the competitors’ countries nor the markets are covered : no big use
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
Questions?
WHY? WHAT? HOW? WHERE?
Copyright © KATZAROV S.A. 19/02/2007
Olivier Sacroug
Katzarov SAEuropean Patent & Trademark Attorneys
Geneva and Basel
[email protected]: +41 22 342 66 30Fax: +41 22 342 66 15
www.katzarov.com
Thank You!