international ip issues federal lab consortium meeting international ip issues dr roisin mcnally -...
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International IP Issues
Federal Lab Consortium MeetingInternational IP Issues
Dr Roisin McNally - European Patent Attorney
20 September 2006
International IP Issues
IP StrategyIP Strategy
Major markets - US and EuropeMajor markets - US and Europe
Practical Advice Practical Advice
Costs
International Patent Protection
GrantedEuropean
Patent
Granted National Patents
12 Months 12 Months
File IndividualOverseas Applications
File IndividualOverseas Application
File EuropeanApplication
File InternationalPCT Application
File EuropeanApplication
File USApplication
International Patent Protection
International (PCT) Application
Individual Overseas Applications
Regional Applications
Different claims/ different scope
Enforceability
International (PCT) Application
Individual Overseas Applications
Regional Applications
Different claims/ different scope
Enforceability
National/ Regional Procedures
National / Regional Applications12/30 months
EP
Search
Examination
Grant
US
Exam
Poss.C.I.Ps
Issue
CA/JP
-
Exam
Issue
AU/NZ
Exam
Issue
-
US / EP Procedural Differences
First to inventGrace periods (prior art, deposits)Must disclose best modeCan with-hold publicationDuty of DisclosureContinuation-in-part practice
EP
US
First to fileNo grace periodEnabling disclosureApplication publishes at 18 monthsNo duty of disclosureNo information can be added
Patentable Subject Matter? US/EP
Methods of Medical TreatmentMethods of Medical Treatment
Methods of DiagnosisMethods of Diagnosis
Computer Programs/Computer related IPComputer Programs/Computer related IP
Plants/Plant varietiesPlants/Plant varieties
Animals/Animal varietiesAnimals/Animal varieties
Contrary to “ordre public”Contrary to “ordre public”
Presentation of InformationPresentation of Information
Technical CharacterTechnical Character
AlgorithmsAlgorithms
Continuation-In-Part Continuation-In-Part (“CIP”) (“CIP”)
Common subject matter – original priority
Added subject matter – priority as of CIP filing
Useful to:cover improvementsadd new experimental data
Dis-incentive – patent term calculated from earliest U.S. filing date
No CIP practice in Europe or other international territories – all material must be derivable from application as filed.
Common subject matter – original priority
Added subject matter – priority as of CIP filing
Useful to:cover improvementsadd new experimental data
Dis-incentive – patent term calculated from earliest U.S. filing date
No CIP practice in Europe or other international territories – all material must be derivable from application as filed.
Best ModeBest Mode
Statutory requirement in US – not elsewhere
Must set forth best mode of carrying out invention known to inventor at time of filing
Failure to disclose best mode invalidates patent; e.g.
no preferred embodiment described
aspects which materially affect claimed invention left out
Not an issue outside US – application must be enabled
Statutory requirement in US – not elsewhere
Must set forth best mode of carrying out invention known to inventor at time of filing
Failure to disclose best mode invalidates patent; e.g.
no preferred embodiment described
aspects which materially affect claimed invention left out
Not an issue outside US – application must be enabled
First to invent First to invent systemsystem
Rights to invention based on earliest date of invention
Proved by corroborated evidence of conception and reduction to practice
Written records that are signed, dated and witnessednotebooksinvention disclosure forms
Priority contest is an “interference”
Rest of world – first to file
Rights to invention based on earliest date of invention
Proved by corroborated evidence of conception and reduction to practice
Written records that are signed, dated and witnessednotebooksinvention disclosure forms
Priority contest is an “interference”
Rest of world – first to file
Grace periods/ Biological Grace periods/ Biological depositsdeposits
Prior art12 month grace period for own disclosureafter 12 months, absolute bar to patentability
Biological deposits (cells, bacteria, plasmids, etc.)can deposit any time during pendency of application
No grace period in Europe, might change soon but not yet.
Deposits required to be identified within 12 months – details within 16 months
Prior art12 month grace period for own disclosureafter 12 months, absolute bar to patentability
Biological deposits (cells, bacteria, plasmids, etc.)can deposit any time during pendency of application
No grace period in Europe, might change soon but not yet.
Deposits required to be identified within 12 months – details within 16 months
Duty of DisclosureDuty of Disclosure
Must disclose to USPTO all known information material to patentability All persons involved with application under duty
inventorsattorneysFailure to disclose invalidates patent
No duty of disclosure in Europe – often recommended to disclose to ensure valid enforceable patent – but not necessary – can be used as defensive mechanism.
Must disclose to USPTO all known information material to patentability All persons involved with application under duty
inventorsattorneysFailure to disclose invalidates patent
No duty of disclosure in Europe – often recommended to disclose to ensure valid enforceable patent – but not necessary – can be used as defensive mechanism.
U.S. Non-U.S. Non-PublicationPublication
Must be requested at time of filing
Foreign filing abrogates request
Otherwise, application publishes 18 months from priority date
In Europe and rest of the world application must be withdrawn to avoid publication at 18 months.
Must be requested at time of filing
Foreign filing abrogates request
Otherwise, application publishes 18 months from priority date
In Europe and rest of the world application must be withdrawn to avoid publication at 18 months.
Practical Tips and Practical Tips and CostsCosts
Consider overseas protection from the beginningRemember first to file and not first to inventFor important inventions consider defensive
patentingConsider using different text for outside USAMinimise translation costs where possibleMinimise claim numbers and categoriesReview US text early for international issuesConsider subject matter and national requirementsConsider markets, competitors and enforceability –
separately and together.
Consider overseas protection from the beginningRemember first to file and not first to inventFor important inventions consider defensive
patentingConsider using different text for outside USAMinimise translation costs where possibleMinimise claim numbers and categoriesReview US text early for international issuesConsider subject matter and national requirementsConsider markets, competitors and enforceability –
separately and together.
International IP Issues
Thank you for your attention.
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