CEIPI CENTER FOR INTERNATIONAL INDUSTRIAL PROPERTY STUDIES OF THE UNIVERSITY OF STRASBOURG 8 WORLD INTELLECTUAL PROPERTY ORGANIZATION WIPO/CEIPI/PI/SB/98/32 ORIGINAL: English DATE: September 1998 I~I - NATIONAL INSTITUTE OF INDUSTRIAL PROPERTY OF FRANCE E WIPO TRAINING COURSE ON THE LEGAL, ADMINISTRATIVE AND ECONOMIC ASPECTS OF INDUSTRIAL PROPERTY organized by the World Intellectual Property Organization (WIPO) in cooperation with the Center for International Industrial Property Studies (CEIPI) of the University of Strasbourg (France) and the National Institute of Industrial Property (INPI) of France Strasbourg, September 7 to 25, 1998 THE ROLE OF INDUSTRIAL PROPERTY AGENTS Lecture by Mr. WulfBauer, European Patent Agent, Cologne (Germany) n:\orgacad\shared\sxb98\doc-e\bauer98e.doc
WIPO/CEIPIIPIISB/98/32 page 2 SUMMARY OF THE LECTURE 1. INTRODUCTION 1. Welcome 2. Introduction ofmyself 3. General aspects ofwork in the field ofindustrial property: (a) (b) Cc) (d) international importance for enterprises and inventors technical and juridical skills importance for development of new products n. THE PATENT ATTORNEY (INDUSTRIAL PROPERTY ATTORNEY, PATENT COUNSEL) 1. Training National regulations, international admission rules and tests for EPO, otherinternational organizations: WIPO, OAPI, European Trade Mark Office, Alicante (Spain); duration of training, qualification, examination, Bernecker (a member ofepo) published details of national regulations for many EPO member States. In general a technical background (university degree) and a juridical training on top of it. Little technical background necessary for those who specialize in trademarks only. Training in Germany, Switzerland, United States of America as examples is explained. 2. Code National laws for patents counsels, e.g. secrecy, professional conduct, liability, residence in the country, nationality, unpunished, case of conflicting interests, designation (e.g. European patent attorney, conseil en brevets d'invention, Europaischer Patentvertreter) of the profession, official list ofregistered patent counsels, advertising (publicity), taxes, training. Professionals from one or more national groups, rules of conduct, training of candidates, specialized journals. International groups, e.g. FICPI, AIPPI; journals, international conferences. 3. National protection ofthe profession, exclusive right to represent clients, address of service, lawyers (solicitors).
WIPO/CEIPIIPIISB/98/32 page 3 4. Difference Employed counsels (corporate patent counsels); private practice counsels, no difference in training, practical every day work, acting before a patent office, court; differences in: field of work, canvassing orders and clients, income, links and communication with inventors and management. 5. Liability Difference: employed - independent counsels, risk of claims against a patent attorney, unlimited liability in many countries, bankruptcy of attorneys, limited liability (e.g. Sweden), juridical persons, insurance, liability and qualified work. 6. Number of patent specialists per country: Self-regulating mechanism (preferred), unlimited - limited admission, 0.2 to 0.4 per million of the number of inhabitants for an industrialized country. 7. Professional groups and federations Importance for international work and understanding of national (foreign) rules, further training, harmonization of rules and laws, defending the profession, solidarity. 8. Law firms Counsels practicing individually, formalities (specialists), clients wish to address to one person, organization, in ~eneral advantages and problems are the same as those lawyers have. ill FIELD OF ACTIVITY I. General Patent counsel is a mediatorbetween engineering and law, responsible for patents (and utility models), trademarks, design protection, software protection, plant breeding rights (examples) etc. to obtain a protection for an invention. This protection is a monopolized one, a patent confers detailed and sole rights to the owner (Constitution of the United States of America), possibility to regain development expenses and a profit from the market. Contrary: Unlimited right to copy the product of a competitor. Effect on industry, national effect for a non-industrialized and an industrialized country, reciprocity. Future of an enterprise, future products, financial investment in new products.
2. Detailed activity, e.g. patent ~O/CEIPVPVSB~8D2 page 4 Discussion with inventor(s), realizing the novel and non-obvious concept ofa new technical idea, scope of protection (very important) possible by-passing, alternate (different) solutions, elaboration of important features, risk, wording a patent application, drawings, handling and filing, formalities, discussion with the exarniner(s), obtaining a patent, fees, annuities. International application(s), Paris Convention for the Protection of Industrial Property, correspondence with international patent offices and national colleagues. Patent infringement, opinion, court action, decisive step for a patent, very little chances to heal omissions, judge is a lawyer, normally without technical background (Xerox patent and Epilady patent for examples). Information about similar patent application of competitors, watch. 3. Second example for activities: trademark application, registration, watch, court, action 4. Third example: license 5. Fourth example: bypassing a patent 6. Problems Difficulty to get specialized personnel, assistance, software for the bureau, because total number of bureaus is small, successor, training is very long, many admissions (e.g. national, EPO, EP-trademark office) financial risk for those who work in a private practice, high expenses and fees of patent offices and foreign colleagues, bankruptcy ofa client. In the industry, difficulty to link patent department and management, in general reduced understanding of the possibilities of protection. N. FINALE MAJESTUOSO At the end ofmy speech I refer you to a song for patent attorneys written by an Italian colleague, Fabrizio de Benedetti "The PatentAttorney Song" A patent attorney is a mystery man a person whose job nobody can tell he is the inventor's pathfinder the interpreter of businessmen's dreams The Patent Attorney Song A patent attorney/what is he a patent attorney/what is he
WIPO/CEIPIIPIISB/98/32 page 5 To look for a priority to search for the novelty to claim an exclusivity that's his ability A patent attorney is a mystery man a person whose job nobody can tell he enjoys patentology half law and half technology he likes to play the rights ofmonopoly! He gets excited with oppositions he falls in love with litigations he feels happy with applications he likes to write his client: we won, we won, we won To assess patentability to appraise originality to advise registrability that's his ability A patent attorney is a mystery man a person whose job nobody can tell he enjoys patentology half law and half technology he is an element ofworld's ecology to be protected for common welfare, to be protected for common welfare. The patent attorney/the best ofthe best the patent attorney/the best of the yourself [End of document]