1. IPR ISSUES.
SEVILLE, 07/11/2011

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AGENCIA IDEA
• It is the Regional Development Agency of the Andalusia Government
• In 1987, a law approved by the Andalusia Parliament created the former “Instituto de
Fomento de Andalucía (IFA, the RDA)”.
• Since 2004:
•it is attached to the Regional Ministry of Innovation, Science and Enterprise
•it is called the Agency for Innovation and Development of Andalusia (IDEA)
•its main goals are supported on Innovation

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• Spanish autonomous region with the greatest number of inhabitants (>8,3
million) and the second largest region in Spain.
• Industrial sector consisting mainly of small-medium sized enterprises

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WHO WE ARE
Córdoba
• CITPIA is managed by the Agency for Innovation and Huelva
Jaén
Development of Andalusia which is the Regional Sevilla
Development Agency of the Andalusian Government Granada
Almería
Cádiz Málaga
• . CITPIA (Centro de Informacion Tecnologica y de
Propiedad Industrial de Andalucia)
• PATLIB Center of the Spanish autonomous region of Headquarter
Andalusia Branch Office
• Headquarter in the andalusian capital Seville, and
offices in each of the 8 provinces of Andalusia
• One CITPIA Officer (IP Helpdesk) in each province
• The Agency has about 300 employees in total,

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Technological and business services
The Agency for Innovation and Development of Andalusia, in conjunction with
the financial incentives that it handles, makes a package of services available.
Business Services:
- Industrial Designs
- Transfer of Technology
- Consultant in financing R+D+I
- Business Nursery
- Information about Productive Areas (SESPA)
- Information on grants and incentives
- Databasis of Andalusian Companies Balance Sheet
- Business self-diagnosis
- Information about Advaced Services (SERAVAN)
- Simultaneous Telephone Translation (ASISTEL)
Invest in Andalusia

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• Financing services:
The Agency offers several funding programs:
To foster the creation of innovative companies
To foster innovation in existing companies
To foster R+D projects in cooperation with universities
• Business Incubation services:
The Agency is member of the European BIC Network (Business Innovation
Centres)
Renting office space in our Business Center in Granada, Málaga
and Seville
• Technology Transfer services:
The Agency is member of the Enterprise Europe Network and coordinator of
the andalusian branch (CESEAND)
Assistance in commercialization and technology transfer via the
network

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AGENCIA IDEA- SERVICES: PATENTS, TRADE MARKS AND
INDUSTRIAL DESIGNS
– Information
– Technical and Legal consultancy
– Advanced Searches
– Management of the registration process

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AGENCIA IDEA. Intellectual Property Rights
• You can register Intellectual Property Rights at the Agency for Innovation and
Development of Andalusia, such as:
– Inventions (Patents and Utility models)
– Trade marks
– Industrial designs
– Topographies of semiconductor products
• The Agency for Innovation and Development of Andalusia is a collaborating member of
the Spanish Patent and Trade Mark Office (SPTO), which is also recognized by the
European Office of Patents as part of the PATLIB (European Patent Office) Network, as
well as by the World Intellectual Property Organization (WIPO).

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DIFFERENT KIND OF REPORTS
We offer:
Trademark and Designs Search Reports
Sophisticated searches:
Patent Novelty Search Reports
Infringement Search Reports
Validity Search Reports
Patent Statistic Analysis (State of the Art Reports)
Monitoring Services (Technology and Competitor Watch Reports)

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WHAN CAN WE PROTECT
Set of rights that protect the creators of inventions, trademarks or designs from competitors
Exclusive rights: immaterial, territorial, transferable, limited in time (except trade marks)
 Duties (dissemination, exploitation, payment of fees) It gives a monopoly operating in the
market, in exchange for the fulfillment of certain obligations (taxes, exploitation of invention,
use of the trade mark ...)
The acquisition of these rights is voluntary and done through the register. In our
country the Spanish Patent and Trademark SPTO is responsible for processing and
granting

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REGISTERED INTELLECTUAL PROPERTY RIGHTS
IP RIGHTS WITH A CERTIFICATE
Utility
models
Patents
Duration: until 10 years
Duration: 20 until years
Designs
Trademarks
Duration:
Duration: until 10 years
until 5 x
or life
5 years

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COMBINED USE OF IP RIGHTS
Cap
Patented
Coca Cola
Bottle Registered trade mark ®
Registered design
Registered trade mark ®
Label text
Copyright ©
The Coca Cola Company
Trade name
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PRODUCT DIMENSIONS AND EMBEDDED IP RIGHTS
Marketing
TRADEMARK
Image/brand
Reliability
Client
Innovativeness Ergonomics
TechnologySafety Esthetic nature
Design
PATENTS DESIGN PROTECTION
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TRADE MARKS AND TRADE NAMES
"A brand is a collection of perceptions in the mind of the
consumer."

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TRADE MARKS AND DESIGNS
• Effective Trade mark and design protection play an important role in branding and
marketing strategies of businesses
• Consumers think of trade marks and designs as more than the mere product. The
trade mark is for instance:
– A Business identifier
– A guarantee of quality
– The goodwill of the company
– A marketing function

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OPTIMISING YOUR BUSINESS
• Establishment of strong trade marks and marketing are means of making a
high product value
• Ways of optimising businesses competitiveness in a global perspective are for
example:
– Protection of knowledge
– Commercialisation of intellectual property rights

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HOW DO I REGISTER A TRADEMARK?
You must file an application with the relevant Trademark Office for the territory
where protection is desired.
How long does the trademark registration last?
In most countries, the registration of a mark last 10 years, which are renewable
indefinitely for 10-year periods.
Does a trademark registration in any country protect my rights in other
countries?
No. IP Rights are exclusive territorial. That means that they are granted for the
territory they are applied for and they will only be valid in that region or
country.

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WHAT IS THE ROLE OF THE TRADE MARK SEARCH?
Conducting a search is crucial when preparing trade mark applications in order to
avoid filing trade marks that are already registered or applied for, or trade marks
that would be similar to any existing ones.
Trade mark databases are available on most national or regional trade mark offices'
web sites, including the WIPO. The proper search depends on the territory where
the protection is sought (proper database needs to be chosen), classes of goods
and services (they need to be chosen accurately) and the representation of the sign
(its distinctiveness).

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WHAT IS A TRADE MARK?
• A distinctive sign which identifies the goods and services
of one company from those of another
Coca-Cola
• A trade mark helps consumers to identify and choose registered
between products/services based on their reputation and since
quality 1887
• A trade mark is a word or sign which can be represented
graphically and which is capable of distinguishing the
Nike
trade origin of certain goods and services
registered
since 1971

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DIFFERENT TYPES OF TRADE MARKS
• Word e.g. Adidas
• Logo e.g.
• Word/Logo e.g.

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DIFFERENT TYPES OF TRADE MARKS
• Numerals/Letters
• Objects/3D
• Slogans “i'm lovin' it"

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DIFFERENT TYPES OF TRADE MARKS
Example of a well-known trade mark
Other and „new‟ kinds of trade marks: Collective mark, Sounds
(sound marks), Certification mark, Colours or combinations
(colour marks),
3-dimensional, Feel, Movement marks, Graphic reproduction!
Related area: Protected Geographical Indication (PGI)

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DIFFERENT TYPES OF TRADE MARKS
• Tono Nokia
(Marca comunitaria 1040955)
de: Francisco Tárrega
(España, 1852-1909) Grand Vals

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MAKE A GOOD DECISION
Inventing a trade name or brand is not easy.
Sound, simple, bold and catchy is complicated but may involve
commercial success
For Adi Dassler was easier

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THINGS TO CONSIDER WHEN SELECTING
OR CREATE A BRAND
-Check that your choice meets all legal requirements
-Perform a trademark search
-Easy to read, write, spell and remember
-No negative connotations in terms of language

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Special Attention to the negative
connotations in different countries!

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REQUIREMENTS FOR A GOOD TRADE MARK
Article 7 of the Community Trade Mark Regulation
(Absolute Grounds for Refusal)
– Distinctive (unique)
– Not descriptive
– Not similar or identical

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LIKELIHOOD OF CONFUSION
• Identical marks: protected against identical and similar goods/services
• Similar marks: protected for the same goods/services.
in the same way
• Identical goods/services: the marks must not be similar
• Similar goods/services: the marks must not be identical
Well-known marks have a broader scope

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SIMILAR/IDENTICAL
Meaning the way the mark is:
• Written
• Looks
• Phonetic (sounding)
• Conceptual similarity

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SIMILAR/IDENTICAL - EXAMPLES
Written Cool/Kool
Looks
Basket / Buskit
Sounding
For You/ 4 U
Conceptual
Star/Stern

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VARIED PROTECTION OF A TRADE MARK
How close can you get to another trade mark?
• Strong trade mark gives wider protection
• Weak trade mark gives less protection
Important: Make a strong and original trademark

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GOOD LIST OF GOODS AND SERVICES
• Important to make a good list of goods and services
• Protection covers ONLY the goods and services included in the registration
• Think 5 years ahead
• Classification system
– Like a library system
– 45 classes

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CAN I SELL OR AUTHORIZE THE USE OF MY TRADEMARK?
YES. A trade mark is a legal property right you may own and so, you can sell,
bequeath or otherwise transfer it. You may also license your trademark rights. The
appropriate process to transfer your rights is called Assignment. If you want to sell or
otherwise transfer your trademark, we recommend you to get professional advice
from an agent or law firm specialized in intellectual property.
Will the Trademark Office ensure that a trademark is not infringed?
The Trademark Office does not act as enforcement agency. The owner of a
trademark or a person hired by the owner is the person responsible for monitoring the
market for cases of infringement and take the corresponding legal actions.

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COSTS
Trade mark or Trade name: 138,94 € first class
90 € the followings
Collective or Guarantee : 277,85€ the first class
180 € the followings
Renewal: 160,86 € the first class
108 € the followings

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EXAMPLE(1)
Instancia de SOLICITUD, que contiene información
sobre:
Tipo (producto, servicio, garantía,
colectiva…)
Solicitante Datos del titular o titulares
Documentos aportados: Justificante de pago de
la tasa

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Marca MIXTA EXAMPLE(2)
La solicitud de MARCA MIXTA (denominación +
logo) debe incluir ADEMÁS la reproducción del
diseño de la marca:
Reproducción del motivo gráfico
Descripción de los colores del motivo

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Códigos de la Clasificación de Niza de los
sectores en los que queramos utilizar la marca
Conviene incluir aquellos sectores próximos para
evitar registros que entren en conflicto

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CONCLUSIONS
 A trade mark allows us to identify our products from competitors.
 There is no protection without register
 The register should extend to our potential markets and suppliers
 Good Choice is important
 Lack of protection is equivalent to devaluate a major business asset

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INTERNATIONAL PROTECTION
Trademark filed:
• National Office – acquires national protection
EU system:
• OHIM – acquire protection in 27 member states
International system:
• Madrid Protocol – member states

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NATIONAL REGISTER
Register at SPTO = Protection in Spain
COMMUNITY REGISTER
Register at OHIM (Alicante)
= Protection in EU
INTERNATIONAL REGISTER
Register at WIPO Ginebra)
= Plurality of national
registers

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EU TRADE MARK - COMMUNITY TRADE MARK
• Covers the entire European Community – 27 Member States
• Apply at the OHIM Offices in Alicante (e-filing accepted) (or National Office)
• Fees (can be viewed at the OHIM website: www.oami.europa.eu)

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EU TRADE MARK EXAMINATION
“All or nothing” principle:
– Distinctive character
– Opposition
The optional search reports

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INTERNATIONAL FILING
• Madrid System
• National Applications e.g. in Australia, USA
• Priority claimed for a national application within 6 months

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THE MADRID AGREEMENT AND PROTOCOL

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INTRODUCTION
• The Madrid system for the international registration of marks (the Madrid
system) established in 1891 functions under the Madrid Agreement (1891),
and the Madrid Protocol (1989)
• The two treaties are parallel and independent and States may adhere to either
of them or to both
• It is administered by the International Bureau of WIPO located in Geneva,
Switzerland

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DESCRIPTION
• Open to any State which is party to the Paris Convention
• Open to intergovernmental organizations which maintains its own office for the
registration of marks
• The system makes it possible to protect a mark in a large number of countries
by obtaining an international registration which has effect in each of the
contracting parties that has been designated

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WHO CAN BENEFIT?
• Basic application/registration: an international application can only be filed if the
mark has already been applied for at a national Trademark Office (referred to as
the Office of origin).
• The person or legal entity must have a connection, with the Contracting Party in
order to use the trademark as a basic application/registration.
• An international application must be presented to the International Bureau (WIPO)
through the Office of origin.

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ADVANTAGE
The system of international registration of marks has the following main advantage for
trademark owners
A simplifying mechanism:
• The Madrid system offers a trademark owner the possibility to have his trademark
protected in several countries by filing only one application directly with his own
national or regional trademark office

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WHAT IS THE RELATION BETWEEN COMMUNITY AND NATIONAL
TRADE MARKS?
The CTM system and the national trade mark registration systems co-exist in parallel.
If you wish to protect a trade mark, you can apply for a CTM, a national trade mark, or
both. Note that the exclusive right conferred by the CTM can lead to a subsequent
national trade mark application being refused (as it will constitute an earlier right) and vice
versa, and thus the registrations made under the different systems must not overlap

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IS THERE ANY CONNECTION BETWEEN THE CTM SYSTEM AND THE
MADRID "INTERNATIONAL" SYSTEM?
Since the European Community accessed the Madrid Protocol trade mark owners
benefit from two new options:
1. Extend CTM protection internationally. (A CTM application or a registered CTM
can be used as the basic mark for an international application).
2. Designate the European Community in an International Application.

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DOMAIN NAMES

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INTRODUCTION
Trade mark registration is not company name or domain name registration
A domain name may be registered as a Trade mark and vice versa
Incorporating a registered trademark owned by a competitor or another company into
your domain name or meta-tag may be an infringement

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TRADE MARK VS DOMAIN NAME
• Protection of an Identifier of a • Human-friendly form of Internet
product or service address
• Priority application date • First come, first served
• Territorial scope • World wide (gTLD)
• Division into classes of goods and • In principle, no examination
service
• Examination and opposition

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HOW TO REGISTER A DOMAIN NAME?
It is recommended that you register your domain name through a registrar.
In addition to registering the domain name the registrar will usually also be able to
offer services such as hosting your website and forwarding email.

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GEOGRAPHICAL INDICATIONS (GIs)

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Geographical names can be used in the market with the following meanings:
• Simple indication of source: indicates the origin
• Geographical indication: indicates the origin + quality

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GIS ARE AN IMPORTANT ASSET
− Consumers are constantly faced with the problem of choosing
− Differentiation is a key element in any commercial strategy
− GIs may become an excellent tool to differentiate products and attract purchases
LEGAL REGIME TO PROTECT GIS
• Protected Designation of Origin (PDO)
• Protected Geographical Indication (PGI)

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THE REGISTRATION PROCEDURE
Who can apply? Producer groups
Where to address? Local authorities in Member States
What is the procedure? Application is sent to the Commission.
Publication.
Third parties may object. Registration
EFFECTS
• The use and fruition belongs to all producers/traders in the defined area whose
products comply with the conditions of production laid down in the specifications
• They may prohibit any other person from using or advertise under the registered name,
in such a way as to take unjustified advantage of its reputation

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WHERE TO FIND MORE INFO
Useful links:
• http://oami.europa.eu/ (OHIM)
• http://www.wipo.int/portal/index.html.en (WIPO)
• http://arbiter.wipo.int/domains/index.html (WIPO Domain Name Dispute
Resolution Service)
• http://www.ipr-helpdesk.org/index.html (IPR Helpdesk)
• http://ec.europa.eu/agriculture/foodqual/quali1_en.htm (European Commission
- Agriculture and Food)

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TRADE SECRET

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A trade secret is commonly defined in broad terms as any information, including
but not limited to technical or non technical data, a formula, pattern, compilation,
programme, device, method, technique, drawing process, financial data, or list of
current or potential customers or suppliers that:
-is sufficiently secret to derive current or potential economic value based on the
fact that it is not generally known to other persons who could obtain economic
value from its disclosure or use; and
- whose secrecy is protected by its holder's reasonable efforts.

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HOW CAN I MANAGE THE PROTECTION OF MY TRADE SECRETS
WITHIN THE EUROPEAN COMMUNITY
At present, there is no harmonised system for the protection of trade secrets within the
European Community. Therefore, it is advisable to check the national legislation of the
Member state where trade secrets protection is sought. Nevertheless, in many states trade
secrets protection is regulated under unfair competition legislation.
Trade secrets are protected provided they are kept as a secret. A formal registration
procedure is not needed for their protection. As a result, the owner of the trade secrets must
adopt the proper measures to maintain its confidentiality (for example, a confidentiality
agreement). Generally, a trade secrets owner is protected against unauthorized third parties
who disclose and use the trade secrets.

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COPYRIGHT

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INTELLECTUAL PROPERTY RIGHTS
Contributions to the world of literature and art
Cannot rest on ideas, only protects the way, the outward expression.
Protected regardless of the creative level.
Form is protected regardless of the implementation of the work.
Protected regardless of whether or not exploited
Rights: the author has acquired only by the fact of its creation.

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COPYRIGHTS
The Copyright protects the scientific creations; literary and artistic works, attributing
the author's exclusive right to exploit the simple fact of its creation.
Computer Programs are also subject of copyright

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Copyright
WHAT CAN WE PROTECT ?
 Original literary, artistic or scientific  Derivative works translations, reviews,
creations abstracts, summaries, musical
 Books, musical compositions, arrangements
audiovisual works, sculptures,  Collections Anthologies, Databases
paintings, comics, photographs,
computer programs
No necessary register
Duration Life of the author and
70 years later
Limited protection

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What does copyright protect?
Copyright protects literary and artistic work, such as books, sculptures, painting, music texts,
images and pictures. Copyright also protects specific types of works, such as databases and
computer programs (the list is not exhaustive).
Do I need to register my work?
To enjoy copyright protection, no formality is required.
Copyright protection is automatic and is granted as soon as a work is expressed in a certain form.
How long can my work be protected for?
In general, from the date of creation to seventy years after the author‟s death

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DESIGNS

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WHAT IS A DESIGN?
The outward appearance of a product or part of it which results from lines, contours,
colour, shape, texture, materials and its ornamentation (source WIPO)
“design” means the appearance of the whole or a part of a product resulting from the
features of, in particular, the ... (source OHIM)
Refers to the ornamental or aesthetic aspects of a product
Design makes a product attractive and appealing to customers and may even be its
unique selling point

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WHAT IS A DESIGN?
“design or model "means the appearance of the whole or part of a product
resulting from the features of, in particular
line colors shape texture
ornamentation
contour materials

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REASONS TO REGISTER
Protection or register gives the exclusive rights to prevent unauthorized copying or
imitation by others.
Determines who is the owner and can defend itself against possible attacks
! Presumption of ownership!

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APPARIENCE/ TECHNICAL FEATURES
Utility model or Patent Industrial Design

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REQUIREMENTS
The design must be new and have a singular character
“special period of 12 months for disclosures
Novelty : no identical design has been disclosed
Singular : different general impressión

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REGISTERED DESIGNS
•Protects shape or configuration (3-D) and/or pattern or ornamentation (2-D)
•The lines, contours, colours, shape or texture “ the appearance”
It is not protected by registration of a design:
• the product itself
• the technical function of the product
• the capacity of a sign to be distinctive etc.

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ADVANTAGES OF REGISTERED DESIGNS
• A registered design gives you a monopoly right for the look of a product,
protecting both the shape and the pattern or decoration.
• A registered design will cover the lines, contours, colours, shape, texture and
materials of the product or its ornamentation.

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Requirements for obtaining exclusive rights
• Novelty
• Individual Character
Birth of Right
Application for registration
Term of protection
5 years renewable 4 times (and max. 25 years)

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COSTS AND DURATION
Costs :
Spain: 90€ per 10 designs
European Union 400€
Duration : 5 years: renewal until 25 years

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HOW TO OBTAIN A DESIGN PROTECTION?
By filing:
• A design application with the National Patent Office
• An international application under the Hague Agreement Concerning the
International Deposit of Industrial Designs
• A community design application with the OHIM
THE IP RIGHTS ARE EXCLUSIVE TERRITORIAL

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DESIGN REGISTERED IN THE EU
• 000000013-0001
• Casio Computer Company
• Filed, registered and published on
01/04/2003

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EXAMINATION
• Shape created to perform its function
• Contrary to public policy or morality
• Protected flags or emblems

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REGISTERED DESIGN
• Design Registration No. 52675-0001

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INTERNATIONAL PROTECTION
NATIONAL REGISTER
Register at SPTO = Protection in Spain
COMMUNITY REGISTER
Register at OHIM (Alicante)
= Protection in EU.
INTERNATIONAL REGISTER
Register at WIPO Ginebra)
= Plurality of national
registers

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PATENT BASICS

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WHY DO I NEED TO PROTECT MY INVENTION?
The individual who protects his intellectual achievement through industrial property
rights – either as a patent or as utility model – has the right for a limited period to stop
any third party from making, using or selling the object of the invention without
permission

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PATENTS
DEFINITIONS AND DEMANDS

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WHAT IS AN INVENTION?
• A technical teaching which defines a
relation between technical features and
technical effect
• Has to be reproducible

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WHAT IS A PATENT?
You can say it is:
• An agreement between the
inventor and society
Alternative definition (legal):
• A patent is an exclusive right to
commercially exploit the invention
in this country. Protection up to 20
years
A patent is a prohibitive right

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WHAT CAN BE PATENTED?
• A product
• The apparatus for producing the product
• The process for producing the product
• The use of the product

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WHAT CANNOT BE PATENTED?
• Computer programmes
• Medical and surgical treatments
• Mathematical methods
• Business methods
• Discoveries
• Aesthetic creations
• New species of plant or animal
• Inventions which are contrary to moral standards and
public order (e.g. instruments of torture)
• The human body and any non-separate part/s thereof

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A PATENTABLE INVENTION MUST BE:
• Capable of industrial application
• New / Novelty
• Essentially differ from that which is already known = inventive step

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INDUSTRIAL APPLICATION
• The invention must have at least one
practical purpose and must be
reproducible
• There is no evaluation of quality or
economical factors!
• Only the technical qualities are relevant

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NOVELTY
• Novelty: An objective, global demand
• New in relation to that which is known prior to the date of filing the application
• Known = general availability through the written word, spoken word (lectures,
etc.), usage, etc.

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THE INVENTIVE STEP
To differ essentially =
Inventive step =
Not obvious to a person skilled in the art

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PROHIBITIVE RIGHT
A patent forbid others commercially to:
– produce, sell, work, use, import and possess the invention
But…
…A patent does not extend to:
 acts performed for non-commercial purposes
 acts performed for experimental purposes
 Acts concerning products which are commercially worked by, or with the
consent of, the patentee
 Individual production of a medicinal product at a pharmacy

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PATENT RIGHTS OR INFRINGEMENTS
EXAMPLE
Product e.g.
20 years toothpaste
a+b+c+d
a+b+c
a+b

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PATENT DOCUMENT

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PATENT DOCUMENT
• Description
– common part
– specific part
• Patent claims
• Abstract
• Figures

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THE PATENT’S COMPOSITION Title
Drawings
1. Title
2. Description – common part
– what the patent concerns
– prior art, the disadvantages
– the purpose and advantages of the invention
– how and by which means the advantages are achieved must correspond with the
patent claims
– mode of operation, by means of which describes how the inventive effect is
achieved

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3. Description specific part, and any figures
– detailed technical description with specific explanation of embodiment with
reference to any figures
4. Claims
– independent claim/s
apparatus
method use of ...
product
– dependent claim/s
5. Abstract

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Øvelse
Patenting a pair of scissors
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104

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WRITING A PATENT CLAIM FOR SCISSORS
• We are going to apply for a patent. Try to describe State of the art
for yourself the construction of the scissors.
• Imagine that the current state of the art are: knifes,
pocket knifes and pliers.
• The technical problem to be solved is the difficulty
of cutting paper and textiles
• Analyse what is new – compared to already known
knifes and pliers.
• If new – what is patentable? Invention
• We are going to write a claim
105

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Possible Scissors Patent Claims (1)
1. Tool capable of cutting a sheet of paper without folding it.
or
1. A shredding tool for improved cutting of paper and textiles
None of these claims are valid:
They do not contain technical characteristics!
106

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Possible Scissors Patent Claims (2)
1. A cutting tool comprising two halves, each including a blade provided with a tip and a
cutting edge, a midsection having a pivot point, and a leg connecting said pivot point to
a finger ring, said halves being operably linked at the pivot point by a bolt, the scissors
having a central axis through said bolt and the tips in a closed position,two halves,
each including a blade provided with finger rings and straight cutting edge, a
midsection having a pivot point.
Good!
It could be valid!
107

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Possible Scissors Patent Claims (2)
1. A cutting tool comprising two halves, each including a blade provided with a
tip and a cutting edge, a midsection having a pivot point, and a leg connecting
said pivot point to a finger ring, said halves being operably linked at the pivot
point by a bolt, the scissors having a central axis through said bolt and the tips
in a closed position,two halves, each including a blade provided with finger
rings and straight cutting edge, a midsection having a pivot point.
But it is difficult to figure out all the possibilities
• These pair of gardening “scissors” are not covered by the said claim because
they… do not have “finger rings”!
108

108. ip4inno
A probably better writing with a dependant claim
1. A cutting tool comprising two halves, each of them including a blade provided
with a cutting edge, a midsection having a pivot point. (independent claim)
2. The cutting tool defined in claim 1 wherein said blades have finger rings
(dependent claim)
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109. ip4inno
But it is always difficult to cover all possibilities!
What about this claim?
1. A cutting tool comprising two elements, at least one of them provided
with a cutting edge, and a midsection having a pivot point between the said
elements.
110

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PATENT PROCESS

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The Patent Process (simplified)
Application
Examination
for official
secrets Application
Formal refused
examination
Storage
Search and Application
examination Decisio approved
n
Publication A Publication
B
Further Opposition Expiration
examination after max. 20
years

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Roles of the Important Partners
Step 1: Composition of Step 2: Filing application
application
Step 4a: Reconstruction of
application Attorney
Inventor
Patent
Office
Step 4: 1. Decision
Step 3: 1. Examination
Step 6: Final Step 5: Further examination
Decision
Step. 7: Publication & storage

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PATENT STRATEGY

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WHY TO APPLY FOR A PATENT?
To:
• Provide insurance for one‟s invention and investments in developing
technology
• Prevent others from patenting the invention and secure one‟s place in the
market
• Attract investors for further development, and to hold on to current investors
• Sell the patent rights in the future as a single commodity or business
• Marketing value

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PATENT STRATEGY
• Options:
• Patent protection
– national patent
– international patent application
– regional patent system
•
• Patent prophylaxis – publication

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PATENTS

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PATENTS AND UTILITY MODELS
CONTRACT
ADMINISTRATION APPLICANT
Exclusive Exploitation MONOPOLE DISCLOSURE trough a public document

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WHICH TYPE OF PATENT?
National patent can be used:
• For protection in the home country market or in a few countries
• As a basis for extending protection to other countries or regions
International patent applications can be used:
• For protection in many countries and for extending the pre-publication period
(up to 30 months)
Regional patent can be used:
• For protection in a number of countries in the same region at a lower cost

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INTERNATIONAL PATENT SYSTEMS
Basic principle:
• Patent in each country
The systems:
• Patent Cooperation Treaty (PCT)
• European Patent Convention (EPC)
• Other regional systems (OAPI, ARIPO, EURASIAN)

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PRIORITY
Within 1 year from filing you can:
 File your application in other countries with inclusion of priority established in
the first country of filing the application
For patent applications this means that:
 Novelty is valid from the application filing date of the first country

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EUROPEAN PATENT CONVENTION (EPC)
• Single place of filing
• Single place of completion
• Single place of granting
• More economical than group of countries
EPO

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PATENT COOPERATION TREATY (PCT)
• International novelty and patentability search
• Single place of filing
• Final decision for countries
Main advantages:
• One application place
• One set of rules
• Postponement for 30/31 months from priority
date and by that buying time!

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WHEN AND HOW?
Patent
Refusal
PCT, EP, COUNTRY
Priority year
Appeal 2 months
Refusal
0 6 12 18
Opposition 9 months
Further procedures
Search and
1st examination
Patent Adm. Re-examination
Publication

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PCT SYSTEM - IMPORTANT DATES

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PCT Organisation - units
Application RO/NO ISA IB Demand? IB
Functions:
RO/IB Functions: Functions:
YES
1. Establish
IB = International bureau 1. Performs 1. Publication
Functions: IPRP and
(WIPO) Search of
send to
and ISR+WO
1. Collect designated
RO/NO = Receiving opinion
fees 2. Transmits offices
office is national office 2. Transmits ISR+WO
2. Receive ISR+WO to IB and
RO/IB = Receiving office appl. to IB and applicant
is International Bureau 3. Check applicant
(WIPO) formality IB IPEA
4. Transmits
ISA = International record Functions: Functions:
searching authority copy to IB
and search 1. Transmit 1. Transmit copy of
IPEA = International copy to IPER to demand to IB+notify
preliminary examination ISA elected applicant
offices
authority 2. Performs WO/IPER
3. Transmit IPER to IB
and applicant

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UTILITY MODELS

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UTILITY MODEL
• The ”Patent-system” for smaller inventions
• Conditions:
– solve a technical problem
– new
– inventive step (in some countries e.g. Turkey not necessary)
• Often used for inventions concerning:
– household goods
– hand tools
– furniture

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THE UTILITY MODEL
It looks like a patent.
The U in the publication
number marks the
utility model
U as - utility
- utilité
- utilidad
- utilità

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THE UTILITY MODEL IS SIMILAR TO A PATENT
Similar in terms that:
– a utility model is an exclusive right
– allows the right holder to prevent others from commercially using the
protected invention
– may also be sold or licensed
– within 12 months a national utility model application can be turned into a
European patent application, if the utility model application fits to the
requirements of the European patent application

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EXAMPLE OF UTILITY MODEL

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THE UTILITY MODEL IS SIMILAR TO A PATENT BUT …
 the lifetime is only 10 years
 granted within a few months
 may be granted without examination (e.g. in Germany)
 the fees for application and maintenance are cheaper
 it only protects products NOT processes
The assembling of …
A product …
cannot be
can be protected
protected

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THE UTILITY MODEL AND THE CONCEPT OF NOVELTY
• The nature of an invention is that it is new
• Normally, new means new to the world
• Concerning the patent law new means
"does not form part of state of the art"
which is in accordance with our understanding of novelty
• In contrast to a patent, in some countries the novelty requirement to
obtain a utility model is "relative" (e.g. Germany, Spain)
– only a public written disclosure of the invention in Spain/Germany is
prejudicial against the novelty of the invention
– in Germany a description within the 6 months preceding the date
relevant for the priority of the application shall not be taken into
consideration if it is based on the conception of the applicant or his
predecessor in title.

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WHERE CAN UTILITY MODELS BE ACQUIRED?
Countries and regions providing utility model protection are:
Australia Czech Republic Italy Portugal
Argentina Denmark Japan Republic of Korea
Armenia Estonia Kazakhstan Republic of Moldova
Austria Ethiopia Kenya Russian Federation
ARIPO Finland Kyrgyzstan Slovakia
Belarus (France)* Malaysia Spain
Belgium Georgia Mexico Tajikistan
Brazil Germany Netherlands Trinidad & Tobago
Bulgaria Greece OAPI Turkey
China Guatemala Peru Ukraine
Colombia Hungary Philippines Uruguay
Costa Rica Ireland Poland Uzbekistan
Source:http://www.wipo.int/sme/en/ip_business/utility_models/where.htm

134. ip4inno
WHY A UTILITY MODEL?
• Protects minor inventions excluded from patent protection
• Protects inventions where a shorter protection period is required
• Speedy protection
• Easy
• Cheap
• Use utility model as a strategic weapon
example: In DK the furniture industry uses utility models to ”pack in” patents. If
one company has a patent for e.g. a chair, a number of competitors will file utility
model applications with tiny developments of the chair. The patent holder cannot
change his chair in any way without infringing the utility models. Hence he has
to make a licence agreement or buy the utility models from his competitors!

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OTHER SUPPLEMENTARY RIGHTS AND CERTIFICATES
Plant Varieties – Objects of Verification
• Varieties of all botanical genera and species, including, inter alia, hybrids
between genera or species-
• Variety – a plant grouping within a single botanical taxon of the lowest known
rank
Supplementary Protection Certificates for products
which constitute:
• The “active ingredient”, or combination of active ingredients, of a “medicinal
product”; or
• The “active substance”, or combination of active substances, of a “plant
protection product”

136. ip4inno
PATENT AND BUSINESS
Is my invention new?
What is state of the art?
Which solutions already
exist? Who are my competitors,
or potential partners
and what do they do?
Am I free to use or
do I infringe someone’s
patent?
What’s going on
in a specific technical field?

137. ip4inno
LINKS
• www.epo.org (European Patent Office)
• www.wipo.int (World Intellectual Property Office)
• www.uspto.gov/patft/ (US Patent and Trademark Office)
• www.espacenet.com (Europe‟s network of patent databases)

138. ip4inno
MAKING MONEY ON IP
• A way of making money on IP and insuring return on investments are for
example:
– Licence agreements
– Auctions
– Acquisitions of companies

139. ip4inno
HOW TO LOSE MONEY WITH PATENTS ?
• Investigating things we shouldn‟t do
-If we only want to earn money
• Patenting things we shouldn‟t
- Secrets
- Invention with no commercial interest
- Invention that already exist
• Selling things we shouldn‟t
- Infringing a third party rights

140. IP Management ip4inno
LICENSING IP RIGHTS
Licensor Licensee
• Exchange agreement between the licensor
and the licensee (license-holder).
• Owner (licensor) of IP Rights permits another party (licensee) to use his IP Rights
• Licensor grants the right to use his IP to the licensee
• Licensee pays licence fees or royalties (or other type of compensation) to the licensor
143

141. IP Management ip4inno
WHAT CAN BE LICENSED?
All kind of registered IP:
• Patents
• Trademarks, etc.
Unregistered IP that can be kept secret such as:
• Technology, know-how, compounds, recipes etc; basically any kind of know-how
and technology that can not be copied directly from existing results / solutions /
products.
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144

142. IP Management ip4inno
LICENSE PAYMENTS
Upfront payment + regular royalties
• Lump sum paid on the granting of the license
• Regular fixed payments
Milestone payments
• Fixed amounts due on the attainment of a specific event
(e.g. approval of an authority, successful prototype testing, acceptance of a
bid, ...)
Royalties based on sales revenue
• Widely used payment agreement
• Royalty rate may be fixed or dynamic
Quota license
• (Fixed) royalty, based on sold or made units
145

143. IP Management ip4inno
EXAMPLE: PATENT LICENSING CONTRACT
ISSUES TO BE AGREED ON THE CONTRACT
• Purpose of the Agreement and the terms • Term of Agreement, incl. conditions for
used period of notice and withdrawal
• Parties of the Agreement with • Extent of the licence holder‟s right
identification information • Terms of re-licensing
• Accurately identified licensed goods • Terms concerning infringement situations
• Products and services covered by the • Secrecy and confidentiality
licensing right • Transferability of a licence agreement
• Geographical area covered by the licence • Entry into force of a licence agreement
right
• Breaches of contract and their
• Royalty, computing bases and payment consequences
schedule, minimum royalty, advance
payment, if any • Applicable law and settlement of disputes
• Control in respect of the quality of the
products and the use of the trademark
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146

144. IP Management ip4inno
IN-LICENSING
• Exploiting technology that is new to the company
• Access to technology otherwise unobtainable
• Opportunity to combine company‟s own and in-licensed
technologies to create new solutions / products
• Opportunity to achieve geographical monopoly by exclusive licence
agreements
• Enables focusing in a narrow field of technology in R&D
• Savings in company‟s own R&D costs
• In-licensing vs. cross-licensing?
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145. IP Management ip4inno
CROSS-LICENSING
• Cross-licensing agreement is an agreement according to which two parties grant
a license to each other for the exploitation of their patents.
• Cross-licensing is the mutual sharing of patents between companies without an
exchange of a license fee if both patent portfolios are about equal in value.
• In cross-licensing, each company can make, use, and sell products claimed in
each other's licensed patents without patent infringements.
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146. IP Management ip4inno
PATENT POOL
• Patent pool is an agreement between at least two parties agreeing to cross-license
their patents (relating to a particular technology)
• Patent pools are an example of cases where members of a competitive industry join in
to create common resource that is to their collective benefit
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149

147. ip4inno
CONCLUSION
All in all:
• It is essential for businesses to have a clear defined strategy covering all IP
and intellectual property rights within the company

148. IP Management ip4inno
KEY RECOMMENDATIONS:
• Develop an IP strategy • Revise your IP portfolio continuously
• Get professional help • Start competitor and technology watch
• Choose the right partner • Demand information
• Do not underestimate the cost • Communicate pro-actively
• Adapt your filing strategy to your • Keep in touch with your licensee
business
• Be sure of your case
• Consider licensing as an opportunity
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149. ip4inno
ENFORCEMENT - OPTIONS
Infringement of an IP right
1 2
3
Litigation Alternative
Dispute Resolution
(ADR)
A combination of
Litigation and ADR
(Alternative Dispute Resolution)
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150. ip4inno
IP LITIGATION
• How to enforce your IP right?
– depends on the IP right infringed
ex: Patent
• Decision to take legal action?
– IP rights might be questioned and declared invalid
– court decisions will be normative for similar conflicts
– court decisions are made public
– risk of bad publicity
– time and money consuming
– cases involving patents highly complex due to the subject-matter
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151. ip4inno
INFRINGEMENT AND LITIGATION
Type of Method of Outcome of
Goal
infringement- prosecution enforcement
- To stop the infringement immediately
- Seizure or delivery of goods
Prohibitory injunction
- Precautionary seizure of movable and
immovable property
To prevent the infringement from being Court action to confirm
Civil Private
remitted the interim injunction
Infringement Prosecution
Court action for a
Recognition of the IP right validity
declaration
Court action for
Getting damages for the loss encountered
damages
- Public interest in punishing infringements of
Fines and in case of
IP rights
Criminal Public gross infringements
Infringement prosecution also terms of
- Especially in cases of Counterfeiting and
imprisonment
Piracy but can be used for all IP rights
155

152. ip4inno
Servicios Centrales – Sevilla
C/ Torneo, 26
Teléfono: 955 03 07 00
Gerencias Provinciales
Almería: Huelva
Avda. Pablo Iglesias, 24 Avenida de Andalucía nº 6 bajo
Teléfono: 950 006 808 Teléfono 959 011200
Cádiz Jaén
Alameda Apodaca, 20 Carrera de Jesús, 9, bajo
Teléfono: 956 009 510 Teléfono: 953 006 100
Córdoba Málaga
Plaza Cardenal Toledo, 6, bajo C/ Cister, 5
Teléfono: 957 005 000 Teléfono: 951 042 902
Granada Sevilla
BIC Granada C/ Adriano del Valle, 4, local 1
Parque Tecnológico de Ciencias de la Salud Teléfono: 955 030 900
Avda. de la Innovación, 1
Teléfono: 958 750 570

153. ip4inno
THANK YOU FOR YOUR ATTENTION
Amalia Bernier
AGENCIA IDEA
abernier@agenciaidea.es
www.agenciaidea.es
propiedadindustrial@agenciaidea.es