Table of Contents
Part One: IP evolution
1.1 A more unitary European IP architecture
Professor Laurent Manderieux, L Bocconi University, Milan
The EU … but not only the EU
The new EU-wide integrated IPRs: big success and much use
Partly integrated rights
The EPO: a convenient European alternative route for getting patents
What about the future?
1.2 Plans for a unitary patent in Europe
Hans Hutter, Nederlandsch Octrooibureau
Attempts to establish a patent at European Community level 2010
Current proposal: ‘enhanced cooperation’
Conclusion
1.3 When is a patent right for you?
Jeremy Philpott, European Patent Academy
1.4 European or national applications
Timo Sole, Leitzinger Oy
Competence of the national patent offices
A national route for Finnish applicants
The national route for foreign applicants
Utility models
Conclusions
1.5 Patent trends
Rainer Frietsch, Peter Neuhäusler and Oliver Rothengatter, Fraunhofer Institute for Systems and Innovation Research
Introduction
Deconstructing the structures
Concluding remarks
Part two: The IP advantage
2.1 IP and the Innovation Union
Erik Westerman, Enterprise Europe Network
Research projects
Luuk Borg, EUREKA
2.2 IP and open innovation
Maria del Henar Alcalde Heras and Bart Kamp, Basque Institute of Competitiveness Orkestra
2.3 Innovating out of recession
Jacqueline Needle, Beck Greener
The need to protect innovation
Patenting
The Patents County Court
The Unified Patent Court
2.4 How to extract value
Li Westerlund, Bavarian Nordic
The road from idea to operational business
Patents critical to the biopharmaceutical industry
Leveraging expense and risk
Final remarks
Part three: IP capability
3.1 IP in the plan
Kristine M Madsen, Bull & Co
Why IPR management?
Six steps to IPR management
3.2 High-level IP
Arnaud Gasnier, Patentopolis
What do researchers and managers typically have to learn?
Empirical observations: five years of in-house IP training practice
Three generic formats of innovative in-house training/coaching with proven efficiency
Conclusion
3.3 IT for IP
Roland Sandner, GSI Office Management
IPMS objectives
User interface
Security
Customizability
Integration
Process management
Reports and analyses
Summary
3.4 Pioneering IP
Birgitte Stephensen, Genmab
How do pioneer inventions arise?
How can business models be designed to allow for innovation and pioneer inventions?
Synergy between small companies and big pharmas
A business model for innovators
Part four: IP and technology frontiers
4.1 Software and computer-related inventions
Jan Nilsson, Ström & Gulliksson Intellectual Property
Patent strategies for IT companies
A well-considered patent strategy for supporting the business
Summary
4.2 Intellectual property and climate change
M Monirul Azam and Marianne Levin, Stockholm University
Climate change – the new big IP battle
Do IP rights trigger or impede the transfer of ESTs?
Special treatment of green patent applications
Functioning IP and technological development
Climate change resilience and IP interaction
4.3 Life sciences
Marcel van Kooij, Arnold & Siedsma
When to file
What to file
Where to file
Conclusion
4.4 Medical devices
Stefan Golkowsky and Tim Oppermann, Pfenning, Meinig & Partner
Restrictions regarding medical methods in Europe
Filing strategies in view of the restrictions
Summary
4.5 Innovation in plants and seeds
Szonja Csörgo, European Seed Association
Why IP protection for plant varieties?
What is plant variety protection (PVP)?
PVP – a perfect tool for technology transfer
Checklist – what can you gain from plant variety protection in the EU?
Part five: IP and creative challenges
5.1 Adwords
Jacques Goyet and Florence Ménard, Bignon Lebray
Development of referencing services in marketing strategies
Google’s liability for offering its Adwords referencing service
Advertiser’s liability for purchasing keywords similar or identical to a trademark
5.2 The fashion industry
François Herpe and Rebecca Rous, CVS
Standards of IP protection in the European Union and the United States
Impact of recession on global fashion industry
New technologies
New IP challenges
Tendencies in IP management
New legal environment
Tactics for efficient IP protection
Conclusions
5.3 Liability of hosting services
Jacques Goyet and Florence Ménard, Bignon Lebray
Part six: IP filings
6.1 Disclosure: too much too soon vs too little too late
Davy Wauters and Kris Hertoghe, DenK iP
Background
Problem statement
Protect first, then talk?
Risks of early publication, even after initial protection
Conclusion – how to avoid problems
6.2 Drafting choices for first-time patent applicants
Pascale Brochard and Francesca Giovannini, Oshaliang
What should be protected?
Should the claims be broad or narrow?
Should the filing be done as quickly as possible?
Is it possible to accelerate the grant of a patent application?
In which language should the first application be drafted?
How long has the application to be? Should a specific wording be used?
6.3 The protection of trade secrets: a comparative overview
Laëtitia Bénard, Paul Keller and Benjamin Bai, Allen & Overy
International recognition
Protection under different types of laws
Civil remedies
How to improve trade secrets protection?
6.4 Acquiring community brand rights
Gaëlle Bloret-Pucci, BCTG & Associés
Brand name protection
Acquiring rights on creations
Conclusion – uniform protection of rights
6.5 From the scientific to the legal
Marco Serravalle, Serravalle s.a.s.
Definition of the invention
Generalization of the invention
Functional features
Feature expressed in terms of result to be achieved
Product claim or process/method claim
6.6 How to protect yourself online
Isabelle Landreau, Cabinet Avocat Isabelle Landreau
We are all reducible to a number
Individual protection
Collective protection
6.7 What your US competition doesn’t want you to know about US patent law
John Mötteli, Da Vinci Partners LLC
Compelling reasons for early US filing
Conclusions
Part Seven: Fit for purpose
7.1 IP portfolio design
Ilya Kazi, Mathys & Squire
When deciding what to protect, where and how, don’t forget why
What about doing nothing?
If doing something, do it properly
Innovation identification and filing strategies for research groups
Filing strategies for projects involving multiple innovations
Creating an effective portfolio – safety in numbers
Registered design strategy
Conclusion
7.2 IP issues for creative start-ups and spin-outs
Silvia Baumgart, Own-it
IP as an asset of your company
Your company name
Identify your IP and be smart managing it
Your IP policy and procedures
7.3 IP on a low budget
Kimmo Helke, Kespat Oy
Free advice
Different forms of protection
The geographical area of protection
Using risk to transfer costs
Checklist
7.4 Strategic variations
Stephan Wenzel, Hübner Neumann Radwer Wenzel
Patent strategies
Variations by industry
7.5 Seamless cooperation between product development and protection
Antero Virkkala, Kolster
Ideas are born early enough for patenting
7.6 How to recover your position
Nick Sutcliffe, Mewburn Ellis
IP that you did not know you had
IP that you apply for
Protecting technology
Protecting designs
Protecting brand names and logos
It’s never too late
7.7 IP valuation
William Bird, Bird Goën
7.8 Dynamic portfolios
Lars-Fredrik Urang, Onsagers
The basics of business development
The truth about the patent portfolio
Finally – meeting all the arguments
Part eight: Free to operate
8.1 How to clear your path to market
Ulla Klinge, Inspicos
Pre-project phase
Project phase
Pre-marketing and marketing phase
How to overcome your competitor’s patent rights
Summary
8.2 Exploring patent information
Dean Parry, Patent Seekers
Patent database information
Searching patents
Making decisions based on patent information
Potential pitfalls
Conclusion
Useful links
8.3 How to oppose a patent
Felix Harbsmeier, Uexkull & Stolberg
The only way to tackle a European patent for all contracting states
Reasons to oppose a patent
Make sure the opposition is admissible
A patent can be revoked or maintained in its granted or an amended form
8.4 How to design around a European patent
Armin K Bohmann, bohmann
The European patent system
Claim interpretation
Questioning the legal validity of a European patent and its national parts
Summary
8.5 How to limit a patent
Guillaume de La Bigne, at LLR
How to request a readjustment of the protection conferred by the patent (after grant)
Centralized limitation procedure in the EPC
National procedure for limitation (France)
Conclusion
8.6 Be clear who owns the IP
Frédéric Nasrinfar, Meyrier Fayout Lacoste
What is a creation?
The principle of the ownership of the rights in favour of an author/creator who is an individual
The exceptions to the principle of the initial ownership
Part nine: IP in partnership
9.1 Potential for technology partnership and its implications for IPRs
Natalia Mielech, INNOVA Europe
University–industry partnership
Knowledge transfer between clusters
For cluster managers and practitioners
Role of IP in fostering technology partnerships
Conclusion
9.2 Engaging with universities
Alison Campbell
How companies can work with academic researchers
IPR and the value chain
The challenge to business
9.3 Guidelines for technology transfer
Claire Verschelde and Caroline de Mareuil-Villette, ICOSA
The notion of success
Identify technologies suitable for transfer
Technology seeks market
IP due diligence
‘Seek the searcher’ and innovation-driven people
Valuation
Conclusion
9.4 IP in collaboration
Annalise Holme, Holme Patent
The major risks of joint development
Minimizing the risks
Part ten: IP for profit
10.1 IP financing and trading
Pete Jarvis, Snowflake Innovations Inc
Challenges
Trends
Solutions
10.2 How to draft a licence
Geir Kielland and Inge Svae-Grotli, Ræder
Introduction
Key clauses in a licence agreement
Conclusion
10.3 Royalty agreements
Magnus Ødegaard, Bing Hodneland
What is a royalty agreement?
Describe the licensor’s intellectual rights
Define the licence clearly to the licensee
Stipulate the remuneration for the licence
Other contractual provisions
Checklist
10.4 The valuation of patents
Anders Tangen, Brann
What is value?
How to maximize IP value
Part eleven: When you are copied
11.1 IP litigation and alternative dispute resolution
Håkan Borgenhäll and Hanna Tilus, Lindahl
Alternative dispute resolution and IP court litigation
Conclusions
11.2 Preliminary patent injunctions in Europe
Laëtitia Bénard, Avocat à la Cou, Allen & Overy
Harmonization by the Directive 2004/48
Remaining differences between Member States
The question of cross-border preliminary injunctions
11.3 The scope of claims
Peter-Ulrik Plesner, Plesner Law
Equivalence
Case law
11.4 Specialized IP courts
Markus Frick and Demian Stauber, Walder Wyss
Patent litigation in Europe
Patent litigation in Switzerland
Conclusion
Appendix: The history, organization and procedures of the European Patent Office
Origins
Patentability
Patent application procedure
Validation and maintenance
The Boards of Appeal
Index
Index of advertisers
