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Patents in the Electronic (and IT) Industries Olivier Sacroug European Patent Attorney Katzarov SA

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What is a patent? 'Contract' with the society You disclose your invention to the public and, as a counter-part, the government grants you with a 20 years monopoly Patents are national/regional no effects outside their jurisdiction Right to exclude others from making, using, offering for sale, selling, importing the invention Patents do not provide you with the right to make, use, offer for sale, sell or import your own invention Patentee must enforce the patent

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Why should I apply for a patent? Immediate value Grants you with a property right on your inventions Gives you a monopoly on these inventions Protects your developments, Randamp;D investments Licensing opportunities

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Why should I apply for a patent? (2) Indirect value To help convincing investors / partners To strengthen your position in negotiations with partners / competitors

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Why are patents particularly important in the Electronic and IT industries Copying / reverse engineering is relatively easy Very active and 'aggressive' environment

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Why should I not file patent application in the Electronic and IT industries Business is often faster than patent offices

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WIPO Statistics

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Source: Trilateral Statistical Report, 2005 edition; jointly produced by the EPO, JPO and USPTO; Edited by the JPO, 2006.

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What can I protect with a patent? Almost any new and inventive technical solution Components (filters, connectors, ...) Composition of matter Machines (machine tools, electronic equipment,...) Manufacturing methods Services (e.g. over telecommunication networks) Software ?!

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Example 1: connector

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Example 2: electric filter

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Example 3: comp. alignment

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Example 4: inspection module

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Example 5: billing process

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Example 6: single sign-on process

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How should I proceed? Start early in the development process Identify the elements of your solution / idea that bring a real commercial advantage Depending on the complexity of the project, be ready to file more than one patent application

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Patents are only delivered for NEW inventions DO NOT DISCLOSE your invention before you filed a patent application

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What is considered as a disclosure? publication article in a journal or a newspaper flyer abstract pre-print website, blogs, Internet postings letters, fax, emails discussion with friends public use offering for sale

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What is NOT considered as a disclosure? discussions inside the company, in a lab, ... letters, faxes, emails, discussions , seminars if they are explicitly covered by a NON-DISCLOSURE AGREEMENT

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In case of a disclosure by the inventor Grace period USA, Canada: 1 year Eurasia: 6 months Europe, Japan, India and most countries: 0 days

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Other forms of IP protection Petty patents (utility models, modèles d’utilité, Gebrauchsmuster, etc.): usually more limited in time (5-15 years) Designs: protects only the visual aspect Topography: protects a specific design of an integrated circuit Trademarks

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Where should I apply for a patent? The legal effects of a patent effects are limited to a country or a region There are no such things as 'international patents'

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Where should I protect my invention? Own country of development / production Main competitors’ countries of production Main markets

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Provisional patent application Short deadline (before a fair, etc.) Limited financial resources Very early stage, details of solution unclear Extend the life of the patent (pharma) MUST be transformed within 12 months

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International PCT application Covers most countries Postpone strategic decisions (30 months) Postpone major costs Search report and possible examination MUST be transformed into regional/national patent applications

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Direct National/Regional filings Cost effective No modification of the geographical coverage possible after 12 months from the priority date (date of first filing): requires a well-defined strategy from the start

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Source: Trilateral Statistical Report, 2005 edition; jointly produced by the EPO, JPO and USPTO; Edited by the JPO, 2006.

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Adapted geographical coverage: essential A single patent covering one country can be as efficient as several patents covering an entire continent If neither the competitors’ countries nor the markets are covered : no big use

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Questions?

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Olivier Sacroug Katzarov SA European Patent andamp; Trademark Attorneys Geneva and Basel admin@katzarov.com Tel: +41 22 342 66 30 Fax: +41 22 342 66 15 www.katzarov.com Thank You!