EPO: Priority document exchange through WIPO DAS

As of 1 November 2018 the EPO will participate in the WIPO Digital Access Service (DAS) for the exchange of certified copies of patent applications concerning priority documents.

The purpose of DAS is to establish a cost- and time-effective electronic system for processing and exchanging priority documents within participating patent offices, by relieving the applicant of the need to submit the documents to the Office of First Filing.

Find further information here.

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European IPR Helpdesk Bulletin Issue (31)

This Bulletin issue is dedicated to IP and agribusiness, focusing on topics under current debate.

Jean-Luc Gal introduces this issue with the Notice issued by the European Commission on the Biotech Directive and the subsequent developments. The European Seed Association (ESA) explains the interface between patents and plant variety rights (PVR) which led to the creation of the PINTO database.

The CPVO provides an overview on the administrative arrangement for a bilateral cooperation between the EPO and the CPVO, while EPO speaks about patentable inventions relating to plants and animals. Juan Antonio Vives-Vallés, Assistant Lecturer at the University of the Balearic Islands, focuses on the balance between IP systems and the future of crop innovation in Europe in the light of  the new breeding techniques.

In this issue 4iPCouncil has interviewed the CEO of Vitirover, an SME that has used IP to protect its sustainable and efficient invention in the field of agribusiness. Philipp von Kapff and the CPVO have contributed a joint article on the interface between trade marks and variety denominations, and Massimo Vittori, Managing Director of oriGIn, writes about geographical indications and sustainability.

In addition, Marco Musumeci, from the United Nations Interregional Crime and Justice Research Institute (UNICRI), focuses on counterfeiting and food frauds, while Philippe de Jong and Elena Bertolotto, from the Altius law firm, explain to us the first compulsory licence case before the CPVO, posing the question on how to strike the balance between PVR and the public interest.

Finally, the International Union for the Protection of New Varieties of Plants (UPOV)  presents to us their new electronic application system, UPOV PRISMA, and the International Seed Federation provides us with their position paper on illegal seed practices.

As per usual, the Bulletin reports information about the European IPR Helpdesk’s past and future events together with the latest updates from our Helpline service, as well as a brand-new agribusiness quiz and our usual patent quiz.

Interview with Dr Edelbert Häfele, CEO of PATEV

 

Dr Edelbert Häfele is a publicly appointed and sworn expert for valuation and utilisation of intellectual property rights. He holds a Ph.D. in Engineering from the Technical University of Karlsruhe, Germany.

His professional career started in 1985 when he founded a consulting firm focusing on environmental and process technology. Five years later, he entered a joint venture agreement with a supplier for car manufacturers.

 

In 2001, Edelbert became the Chief Executive Officer of PATEV, one of Europe’s market leaders for intellectual property management services. Besides focusing on the evaluation and utilisation of patents in companies, PATEV also offers associated services for the analysis and creation of effective patent items (patent engineering) and patent transfers.

As part of our IP Special "Freedom to Operate", Edelbert answered some questions for us which we collected in this little interview. For more information on the topic, please also refer to the related article.

 

How do we make sure that no critical patents are published after the Freedom-to-operate (FTO) and not considered, e.g. during a development project?

Dr Edelbert Häfele: You need to have efficient competition monitoring in place, i.e. an ongoing monitoring of relevant technologies, features and competitors which helps to keep track of relevant documents and also includes the ability to monitor the legal status of identified applications. In addition, it is always recommended to conduct an FTO search  once the definite features of the products are finalized.

How many documents are typically resulting from an FTO and have to be reviewed?

Dr Edelbert Häfele: The central point in this context is the categorization of the relevant documents. For example, in PATEV’s FTO solution, the most important categories are 4 and 5 which are defined as follows:

Category 4: Further technological reconciliation is recommended as a precaution. This can be done internally. It seems rather unlikely that conflict potential can be deduced here, but this can only be excluded on the basis of internal knowledge of the customer company.
Category 5: Relevant intellectual property rights for which a detailed examination is required. There is a high probability that an attorney is needed for a final clarification.

To answer the initial question, for the FTO Statement:

Product FTO: Category 4: five to twenty documents. Category 5: less than ten documents.

Technology FTO: Here, the number of documents varies a lot depending on the technological scope, definition of features and the concreteness of the development project.

What are main aspects one has to keep in mind while defining the framework for an FTO search? Sometimes, too many documents in the result hits are overwhelming.

Dr Edelbert Häfele: Restrict search to specific relevant jurisdictions. Only include patents younger than 20 years (patent term). Make sure to optimize the search profiles to get less out-of-focus documents. The categorization system for the resulting documents reduces the workload for the company and the attorney to a minimum.
 
Is it possible to miss relevant patents in an FTO search?

Dr Edelbert Häfele: Yes, it is possible for recent applications which are not yet published. Also, an incorrect classification can result in a miss. But it is important to understand that a professional FTO search will identify the relevant or blocking patents with high accuracy. FTO search is complex in nature and because of its complexities, highly skilled professionals are needed.


 

Article: Freedom To Operate in the Context of Horizon 2020

It is the freedom to operate that keeps you in the market

Written by Dr Edelbert Häfele, CEO of PATEV

 

A patent gives you the competitive edge, but it is only the freedom to operate that keeps you in the market

Change is the only constant, and in today’s business world, change is faster than ever before. In this fierce competition, patents play a key role for a business to gain a competitive edge. But it is important to understand, having a patent does not include the right for freedom to operate.

Freedom to Operate, abbreviated as FTO, in simple words is the ability to perform a particular commercial activity of your technology/product/service without infringing third party’s valid Intellectual Property (IP) rights.

This necessitates for an FTO search that can make you aware of third party IP which are enforceable in a specific country in which your product/service will be commercialized.

 

An FTO search should be carried out at an early stage of a product development

Here, PATEV presents a real case which shows how an early stage FTO search and analysis was proved to be critical for Company X in its product development strategy.

Technology readiness level (TRL) of company X: Early stage.

FTO search results: A critical patent family with broad claim coverage was identified. The claim chart analysis showed that the scope of protection was not only relevant for the specific idea but also for future developments planned in a similar direction. The family had 2 members, one of which had already been granted in China and the other one was a still pending German patent application, if granted, Company X’s new idea for the future product would be infringing the German patent.

Strategy:

A continuous monitoring of the legal status of the German patent application was conducted for few months until it was observed that the application was dropped by the applicant. Hence there was no threat from this application in Germany. However, Company X has to be careful and watchful about the granted patent in China, in case Company X would like to expand its business and commercialize its future product in China.

What if the German patent application had not been dropped by its applicant and eventually got granted? We call it now a blocking patent.

Company X would have had to take one of the following strategies

1) Design around/modify the product, 2) licensing-in or partnership, 3) opposition, 4) prepare for litigation with arguments or acquire offensive patents against the blocking patent, 5) if nothing is feasible, abandon the project.

Now imagine a totally different scenario, where Company X didn’t conduct an FTO search early enough and hence is totally unaware of the enforceable third-party IPs. Company X invests money, time and resources on developing this product which could potentially infringe the blocking patent. Company X incurs a huge development loss once it learns about the blocking patent just before the launch through an FTO search at that point. Much adverse situation can arise, when Company X never cared for an FTO search at any stage of its product development and went ahead with the launch; Company X can get sued for patent infringement whereby the litigation risk is rising with the success and popularity of the new product.

Through an FTO search carried out at an early stage of a product development, you know your threats early and can prepare for a feasible risk mitigation.

 

How can FTO solutions be aligned with respect to the different SME Instrument phases in the context of HORIZON 2020? How is an FTO analysis conducted in practice?  Learn more in our related webinar on November 14, 2018.

Please download the PDF version of the article below.

 

About PATEV

PATEV examines, evaluates and shapes patent portfolios, adds the right design to technologies and inventions, and provides consulting support during patent related corporate activities.

Since its foundation 10 years ago, PATEV has continuously expanded its range of services. Today PATEV counts among the leading companies worldwide in the field of Intellectual Property (IP) Management. PATEV has branch offices in Karlsruhe, Düsseldorf, Hamburg and Munich as well as network partners in Switzerland, France, Italy, Great Britain, the United States and Japan.

www.patev.de

 

New online patent-search resource for easy access to medicine patents

The World Intellectual Property Organization (WIPO) and the International Federation of Pharmaceutical Manufacturers and Associations (IFPMA) have launched a new online tool designed to provide easy access to medicine patent information.

The Patent Information Initiative for Medicines (Pat-INFORMED) tool is a unique resource where patent holders provide information about patents covering approved medicines through a free, open access database.

Anyone can search the Pat-INFORMED database simply by entering a medicine’s INN (International Nonproprietary Name) to obtain relevant information about the status of a patent in a particular country. The database includes 14,000 individual patents for now.

Please click here to access the Pat-INFORMED database.

 

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European Inventor Award nominations are open

Led by the European Patent Office (EPO), the European Inventor Award promotes the patent system by telling the stories of successful inventors, and showing how patents have helped them to secure value, raise investment and create jobs. 

The Award is unique in that it honours inventors not only for the genius of their scientific or technological breakthroughs, but also for the impact their invention has on society and the economy, putting a spotlight on the individuals behind the inventions that are changing our lives for the better.

The nomination period for the 2019 edition of the European Inventor Award has started and will end on 28 September 2018.

The nominations are accepted under five different categories:

  • Industry
  • Research
  • Non-EPO countries
  • SMEs
  • Lifetime achievement

For more information about the European Inventor Award, please click here.

 

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European IPR Helpdesk Bulletin Issue (30)

This Bulletin issue is dedicated to IP infringement and enforcement focusing on common IP infringements and the enforcement actions that are available to stop them.

WIPO introduces the topic of IP enforcement in the international context by building respect for IP. EUIPO speaks about the third edition of the Enforcement Database Forum and the upcoming IP Enforcement Portal, while Barbara Weizsäcker, Secretary General at EEIA and EMECA, develops the topic of IP protection at trade fairs and exhibitions through an infringement case which occurred at a German international exhibition.

In this issue we have interviewed a financial news website that explains to us how it was accused of filing its EUTM in bad faith. EPO tells us about the future of patent litigation in Europe with an article on the Unified Patent Court, and 4iP Council describes how to protect your IP rights from wilful infringement.

In addition, Aktion Plagiarius e.V. provides us with an interview on counterfeiting practices and its Plagiarius Prizes.

As per usual, the Bulletin reports information about the European IPR Helpdesk’s past and future events together with the latest updates from our Helpline service, as well as a brand-new IP infringement and enforcement quiz and our usual patent quiz.

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Europe gears up for the Unitary Patent

Last week more than 200 representatives of industry, government, academia and the legal profession gathered at the EPO to discuss the latest developments and preparations for the Unitary Patent and Unified Patent Court (UPC).

The participants voiced strong support for the Unitary Patent package and are eager to see the start of the new system.

The new EPO President indicated that there is a good reason to believe that the new system will start with close to 20 states and would come into operation very soon.

Find further information on EPO's website, here.

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Call for application for membership for a group of experts on the licensing and valuation of standard essential patents (SEPs)

The European Commission has created the group of experts on licensing and valuation of standard essential patents (SEPs) as announced in its Communication of November 2017.

The Commission has now also opened the call for applications for members of the group.

Deadline to apply is 20 August 2018.

Find further information here.

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