IP protection and patent filing strategies:
an overview
Alberto Di Consiglio, EPFL -TTO
Cluj, 21.03.2015
A real life example
You have a technology and you want to find a industrial partner
Partners usually want IP + Proof of Concept or a Prototype
What are the options for a negotiation while shading yourself against possible leakage of
information regarding your invention, and possibly reduce costs of all operations?
Non-disclosure agreement (NDA)
Risky – infringement of an NDA is discussed before national courts with variable outcomes
if the negotiation does not terminate with an agreement among the parts, you never know
what others will do with the disclosed information
Alternative:
Filing a patent application - the strongest tool
PROs:
• Protects an inventor/applicant against any issue (information leakage, publications,
involuntary disclosures etc.)
• 20y protection from the date of filing
Definition of a patent
A patent is one of the available means to protect intellectual property of an invention
A patent is a national, exclusive right to stop others from exploiting (e.g. making, using or selling)
the subject matter of an invention (e.g., the invented product or process)
It is NOT the right to exploit an invention
Definition of a patent
A patent is one of the available means to protect intellectual property of an invention
A patent is a national, exclusive right to stop others from exploiting (e.g. making, using or selling)
the subject matter of an invention (e.g., the invented product or process)
It is NOT the right to exploit an invention
A strategic tool
•
Provides for credibility before an investor or an industrial partner – «psychological» aspects
•
Fosters technologies – it rewards an Applicant for the upward research work
•
It can be used as a “currency of exchange” to improve a business – may be sold or licensed and can
grants you funds
Alternative:
Filing a patent application - the strongest tool
CONs:
COST (filing fees and related fees, attorney fees etc.)
HOWEVER
It is possible to delay and reduce costs as much as possible by filing a
“provisional patent application”
Provisional patent application
Provisional patent application strictu senso: USPTO
 Fixes a filing date
 12 months «shading»
 Can be used to claim priority
 «self-destroy» after 12 months – no actions needed
 Cheap
 No formal contraints
 Use of the phrase “Patent Pending” to mark products embodying the invention
Provisional patent application
«Provisional» patent application: EP, PCT
Filing of a patent application without paying the official fees required
The application will be deemed to be withdrawn
However, the content of the application can be used as a basis for claiming
priority for a subsequent filing of the same invention
Legal basis: Art. 87 EPC ; Art. 4 A.(3) Paris Convention
Provisional patent application
1) Any person who has duly filed, in or for
(a) any State party to the Paris Convention for the Protection of Industrial Property
or
(b) any Member of the World Trade Organization,
an application for a patent, a utility model or a utility certificate, or his successor in
title, shall enjoy, for the purpose of filing a European patent application in respect
of the same invention, a right of priority during a period of twelve months from the
date of filing of the first application.
(2) Every filing that is equivalent to a regular national filing under the national law
of the State where it was made or under bilateral or multilateral agreements,
including this Convention, shall be recognised as giving rise to a right of priority.
(3) A regular national filing shall mean any filing that is sufficient to establish the
date on which the application was filed, whatever the outcome of the application
may be.
Provisional patent application
The most important issue is the description:
35 U.S.C. 112 (a)
The specification shall contain a written description of the invention, and of
the manner and process of making and using it, in such full, clear, concise,
and exact terms as to enable any person skilled in the art to which it
pertains, or with which it is most nearly connected, to make and use the
same, and shall set forth the best mode contemplated by the inventor or
joint inventor of carrying out the invention.
Filing a provisional patent application
US
EP
PCT
Cost
Filing Fee $260
($130 for small
entity)
($65 for micro
entity)
(filing without paying
the required fees)
(filing without paying
the required fees)
Can the application be used for claiming
priority?
Yes
Yes
Yes
Do I need a patent attorney for the
filing?
No
No
No
Are there formal requirements to
comply with?
No
No
No
Which languages are admitted?
Any
Any
Any
Can I file online?
Yes
Yes
Yes
Filing procedure complexity
*
*/***
***
Filing a provisional patent application
THE FAQ: can I file a patent application on my own or do I
necessarily need a patent attorney?
THE reply: you can do it by yourself!
US
EP
PCT
37 C.F.R. 1.31
Art. 133 EPC
Art. 9 PCT
An
unrepresented
inventor may file a
patent application and
prosecute it on his or her
own behalf (pro se)
(1) Subject to paragraph 2, no person shall be compelled to
be represented by a professional representative in
proceedings established by this Convention.
Any
resident
or
national
of
a
Contracting State may
file an international
application.
(2) Natural or legal persons not having their residence or
principal place of business in a Contracting State shall
be represented by a professional representative and act
through him in all proceedings established by this
Convention, other than in filing a European patent
application; the Implementing Regulations may permit
other exceptions.
Filing a provisional patent application - US
https://efs.uspto.gov/EFSWebUIUnregistered/EFSWebUnregistered
Filing a provisional patent application - US
Filing a provisional patent application - US
Filing a provisional patent application - US
SB16 Form
SB16 Form
Filing a provisional patent application - US
Filing a provisional patent application - US
Filing a provisional patent application - US
Filing a provisional patent application - EP
https://webformfiling.epo.org/prod/login
Filing a provisional patent application - EP
Filing a provisional patent application - EP
Filing a provisional patent application - EP
Filing a provisional patent application - PCT
PCT procedure overview
(Usually)
filing of a first
application
at a national
office
(months)
0
Priority
period
Filing of a single
“international application”,
at a single “receiving Office”,
designating all PCT States
12
Patents granted
by “designated”
national and
regional Offices
Publication
18
International phase
30
International processing,
including centralized search,
examination and publication
National phase
added value,
improving and
facilitating ...
…subsequent
national
processing
PCT decision points
Should I file a
national patent
application?
Should I file
applications abroad?
Should I file a
PCT application?
Should I enter the
national phase in view of:
(1) assessment of the prospects
of commercial success?
(2) likelihood of patent grant?
In which countries should I
enter the national phase?
Should I manufacture
or assign or license
the invention?
Can I find a partner
or buyer or licensee?
$
(months)
0
Publication
Priority period
12
$$
Should I withdraw the
application to prevent
publication? Should I
withdraw the priority claim
to delay publication?
$$$$$$
18
International phase
30
(translations, official
fees, foreign agents)
$$
Do I want international
preliminary examination to
enable amendment of the
application before the national
phase?
National phase
Filing a provisional patent application - PCT
https://pct.wipo.int/LoginForms/epct.jsp
Filing a provisional patent application - PCT
Filing a provisional patent application - PCT
Filing a provisional patent application - PCT
Filing a provisional patent application - PCT
Filing a provisional patent application - PCT
Filing a provisional patent application - PCT
Filing a patent application – costs overview
PCT (EUR)
US ($)
EP (EUR)
None
None
80
Filing fee
280
210
120 (online filing)
(30% reduction if filed
in Romanian*)
1,273
(90% reduction)
Fee per sheet
400
(for each additional
50 sheets that
exceeds 100
sheets)
15
(For the 36th and
each subsequent
page)
14
(For the 31st and each
subsequent page)
(90% reduction)
E-filing reductions
None
90
96 – 287
1,285
1,875
(if EPO is ISA)
376
(if RU is ISA and
application is filed in
EN)
Transmittal fee
Search fee
600
Receiving office: RO
*: the applicant must also be one of a small and medium sized enterprise, a natural person, a non-profit organisation, a university or a public research organisation.
A translation into an official EPO language (EN, FR or DE) is required .
Filing a patent application – costs overview
PCT (EUR)
US ($)
EP (EUR)
Examination fee
720
1,620
(30% reduction if
request filed in
Romanian*)
National Phase
Claims fee
80
Each claim in excess
of 20
420
Each independent
claim in excess of
three
780
(Multiple
dependent claim )
235
(For the 16th and
each subsequent
claim up to the limit
of 50)
National Phase
(where applicable)
Designation fee
None
580
National Phase
(where applicable)
Fee for grant
960
915
National Phase
(where applicable)
Receiving office: RO
*: the applicant must also be one of a small and medium sized enterprise, a natural person, a non-profit organisation, a university or a public research organisation.
A translation into an official EPO language (EN, FR or DE) is required .
Unitary European Patent – a good compromise
Thanks for your attention!
Paris Convention member countries