Filing strategies in Europe - PDF Free Download

Filing strategies in Europe Volker Tillmann Dipl.-Phys. German and European Patent Attorney Partner 2 Euro Law Conf erence 2016

Filing strategies in Europe Unitary patents vs. national filings Impact of technology and lifecycles on filing strategy Combined patent and utility model filing strategies Guaranteeing success across all jurisdictions of interest 3 Euro Law Conf erence 2016

Unitary patents vs. national filings TOP 4 approach EP-UE Renewal fees correspond to sum of renewal fees for DE, FR, UK, NL Streamlined portfolio management Limited flexibility Jurisdiction of UPC may not always be desired Competence, procedure, court location, language Not all eggs in one basket By L.tak - File:EUpatent.svg, CC BY-SA 3.0, https://commons.wikimedia.org/w/index.php?curid=34060999 5 Euro Law Conf erence 2016

Unitary patents vs. national filings Considerations to be made: Number of desired (member-) states Value of protection Suspected infringers Strength of the invention (validity) Asset considerations By L.tak - File:EUpatent.svg, CC BY-SA 3.0, https://commons.wikimedia.org/w/index.php?curid=34060999 6 Euro Law Conf erence 2016

Impact of technology and lifecycles on filing strategy Technology Derivable from products? Method or device? Excluded from patentability? Other obstacles for counterfeiters? Time between making an invention and bringing it onto the market? 8 Euro Law Conf erence 2016

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Combined patent and utility model filing strategies Utility models in Europe: Austria, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Poland, Portugal, Russian Federation, Slovakia, Spain, Turkey in the public domain, https://commons.wikimedia.org/w/index.php?curid=3437444 11 Euro Law Conf erence 2016

Combined patent and utility model filing strategies Duration of registration of (DE) utility model: Normally 2-6 months Term of utility models in Europe: 6 (FR)-13 (RU) years Different assessment of prior art: DE: public prior use only within Germany RU: only novelty requirement Reduced level of inventive activity in some countries Protection may be limited to particular subject matter: DE: no method claims May be branched off a patent application: e.g. in DE, DK, AT in the public domain, https://commons.wikimedia.org/w/index.php?curid=3437444 12 Euro Law Conf erence 2016

Guaranteeing success across all jurisdictions of interest One application that fits all jurisdictions? Number of independent claims per category Structure of dependencies Claims fees Subject matter excluded from patentability Allowability and scope of functional features Allowability of amendments Level of sufficiency of disclosure Assessment of patentability Source: Flickr / Jane's Gascony Rather two or more applications from first filing? 14 Euro Law Conf erence 2016

Guaranteeing success across all jurisdictions of interest As applicant: Early involvement of local patent attorneys Trustful and sufficiently complete communication with patent attorneys As local attorney: Advise in advance of elaboration of application documents, if possible Review application documents before filing and check for optimization in view of own jurisdiction Source: Flickr / Jane's Gascony For both: Establish trustful relationship aiming at cooperation over many years Communicate clearly 15 Euro Law Conf erence 2016

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