Archive | 2008, May | (4) posts

IPR2 to strengthen the Europe-China IPR relationship

Last month, the EU-China IPR2 Project, focused on enhancing the enforcement of IP rights in China, was introduced to representatives of European industry, the national patent offices and European intellectual property experts by the European Commission and the European Patent Office (EPO). Few would question the importance of their agenda, but I would like to acknowledge the progress that Chinese IPR has already made in recent years.

Actually, of the IPR cases settled in Chinese court during 2007, no less than 3/4 had an outcome in favour of the IP owner, regardless of the nationality of the plaintiff. Implemented as late as 1985, patent law is still young in China but I think we should have faith in the country’s remarkable ability for change and development. Just consider the numbers: it took 15 years for SIPO to receive its first million patent applications but when they passed the four-million-mark late last year, the last million had been filed in just 18 months*.

The EU-China IPR2 Project is in itself quite interesting. In many aspects, Chinese IPR law is already shaped with Europe as a model. Now, for four years and with an investment of more than EUR 16 million, enforcement of IP rights in China will be improved through a project partly managed by EPO. The project does not address legislative changes but will provide technical support to, and building the capacity of, the different levels of the Chinese legislative, judicial and administrative authorities to help improve their effec-tiveness; as well as improving access to information for users and officials and reinforcing support to right holders. This all is very welcome and for us European-based IP Attorneys with an interest in China it is of extra interest to know that much of the expertise in this development is drawn from our region.

Of course, when it comes to China, changes are many and often dramatic and even more will happen during 2008, at least judging from China’s IPR Strategy Action Plan for IPR Protection for 2008 which was announced at the end of March. This plan contains 10 aspects including 280 concrete meas-ures relating i.a. to legislation, law enforcement, training and public awareness-raising activities. So keep your eyes open and stay updated.

* This number includes all three types of Chinese patent rights: inventions-creations (protecting any new technical solution relating to a product, a process or improvement), utility models (protecting any new technical solution relating to the shape, the structure or their combination of a product, which is suitable for practical use) and designs (protecting any new design of the shape, the pattern or their combination, or the combination of the colour with shape or pattern, of a product, which creates an aesthetic feeling and is suitable for industrial application).

Maria Stenbäck, European Patent Attorney

Can “bad” patent applications be profitable?

I’d like to share with you a few ideas on a subject that is not entirely uncontroversial – not least in the light of comments over the past year from the European Patent Office and Alison Brimelow about “global warming” within the IP system. I intend to explain why it can be profitable – at least, for certain innovations – to systematically file (so called) “bad” patent applications that are allowed to lapse once they have been published.

Here at Awapatent we make it clear that our job is not about creating intellectual property protection, but about helping our customers to turn their innovations into business opportunities – sometimes, but by no means always, with the help of IP rights.

This means, therefore, that my job involves determining how my clients can maximise the profitability of their innovations rather than simply working out how to provide legal protection for these innovations. In the case of one client, for example, we have developed a highly useful system for categorising innovations based on their function and market value.

1) Innovations that win consumers: innovations that attract consumers away from competitors who do not have access to the same technology should be protected by patents in the relevant markets.

2) Innovations where patent protection would undoubtedly produce a commercial benefit, but which nevertheless are of lesser strategic importance: one example of this is when using the patent as a bargaining chip when negotiating with subcontractors and other stakeholders.

3) Innovations that can not be used to secure a competitive advantage, but where it is important to establish freedom to operate.

The classic method for establishing freedom to operate is to describe an innovation in publications, particularly in scientific journals. In recent years it has also become possible in some instances to publish a description of the innovation in prior art databases such as ip.com. In theory this is sufficient to make it impossible for a competitor to protect the innovation by patent. In fact, theoretically, all I would need to do is simply to publish the details on this blog, provided that it is subsequently possible to provide convincing proof to confirm the date of publication. The problem in relying on these methods, however, is that even skilled patent examiners can miss these sources. The fact is that, when it comes to determining the existence of relevant prior art, they are considerably better at searching through patent databases than they are at searching in any other sources.

The strategy we use is therefore quite simply to file patent applications even for innovations for which we are only endeavouring to ensure ourselves of freedom to operate – and to let these applications lapse as soon as they have been published. A patent application published by USPTO, EPO, WIPO or the UK Intellectual Property Office is the best guarantee for ensuring that patent examiners all over the world will find it. The cost of the application is, of course, one factor to be borne in mind when making such a choice; another is which market the innovator is interested in. The cost of formulating the claims is, however, negligible, as it is the description itself that is of interest.

One possible counter-argument is that patent applications involve far more expense than, for example, a prior art database publication. But this does not take into account the whole picture. A published patent application is a much stronger assurance that no competitor’s patent application will be wrongly approved: this reduces the risk of having to initiate very costly oppositions, appeals procedures and court cases, which can result in costs far in excess of the expense of filing a patent application.

Tommy Somlo, European Patent Attorney

Patent intelligence can help you win the battle against your competitors

This time I would like to strike a blow for “patent intelligence”. Part of the reason for this is simply that I personally believe that “patent intelligence” could help a lot of companies win the battle against their competitors. Another significant reason is my own personal interest in this field.

As we all know, technology-based firms continuously seek to discover new technologies and to translate these into commercially flourishing products or services: products or services that can be protected from competition by patents or other intellectual property rights. This usually requires knowledge of the market and of trends in the market: who are your current (and potential future) competitors; who are your potential partners; which technologies attract growing interest and which do not; who are the most productive inventors within a certain technical field; are there any potential barriers of entry into a new technical field, etc., etc.? This is where patent analysis comes into play.

Patent analysis can have significant value for a company in helping to understand and predict the development of the competitive technology landscape. Once the patent analysis has been carried out, the next key stage in patent intelligence is what is known as “patent mapping”. Patent mapping can be displayed by, for example, visual representations using bar graphs, polygonal line graphs, pie charts and other charts/graphs, or even by visual presentations known as “Patent Landscapes”. Visualization is an effective and appealing way of representing the results of this type of analysis.

Patent mapping is a technique for transforming patent information into business intelligence to help CEOs, VPs and others to make well-informed decisions. It is a technique that uses patent information to create graphical representations of patents relevant to a particular technical field, which can be used to illustrate a competitor’s relative patent strength in this area. Intelligence such as this may then allow a company to plan its R&D efforts, evaluate the strength of its patent portfolio relative to its competitors, identify potential M&A opportunities, and so on. Patent mapping gives CEOs and VPs a good way of looking at and understanding the patent landscape without having to understand all the intricacies of patent law. I am certain that many small and medium-sized companies would benefit from this type of analysis.

So, if you want to achieve the leading position you so dearly desire, begin mapping the patent landscape around you…

Christian Arkelius, Patent Attorney

Field all your players if you want to win the game

Imagine a football manager who bemoans the fact that the opposition is invincible and his team never wins. Yet match after match he fields only nine players instead of the full complement of eleven. He’d be branded as a madman – and his career would probably be very short-lived.

The war against the pirates is tough. The battles aren’t easily won. But I am constantly amazed why many companies that are targeted by the pirates choose not to use all the weapons in their arsenal, not to field a full team of players. It is neither as difficult nor as dear as many people think.

Defence. CTM registration and design registration of business critical elements should be a matter of course for all brand managers in Europe. But there is still a remarkable number who don’t do their homework.

Midfield. An overall European strategy and a central EU application for customs seizures of counterfeit goods should be another obvious course of action for most rights holders. Don’t make the mistake of turning a blind eye to shipments under a certain size! Container ships stashed with thousands of pirated products are more or less a thing of the past, replaced by myriads of small packages to individual recipients.

Attack. Make life awkward for the pirates! Find out what it is that they find most difficult to copy, and develop and use these elements. 3D printing, watermarks, metallic thread and complicated patterns can give you the upper hand.

Goalkeeper. Ultimately it is the customs authorities that actually prevent counterfeits from reaching the market. Unfortunately, our borders are often protected by just a handful of customs officers working within small budgets. The more help you can give them – for example, by letting them know which countries the copies are coming from, what the originals look like and how to spot the difference – the more effectively they can help you.

The struggle against the pirates is a tough one. But if all the rights holders always field a full team, the prospects are good for moving closer to the victory we are seeking.

Kristina Fredlund, Attorney at Law