This concise introduction to European patent law and global patent perspectives combines the legal and economic perspectives to adopt a unique approach that serves both inventors -- engineers and scientists -- as well as financiers and economists. Written by experts with first-hand knowledge this book is completely up-to-date, taking into account recent additions to European patent law, especially in the field of biotechnology and genetics. While concentrating on the EU, the world perspective is nevertheless represented, including US particularities. The result is a set of guidelines allowing readers to develop a holistic patent strategy suitable for their specific needs. For scientists, engineers, managers and financiers in the chemical industry.

Claas Junghans studied chemistry at the Technical University of Berlin, Germany, and completed his Ph.D. in molecular biology at the Free University of Berlin. He obtained additional qualifications in economics from Hagen Open University and a degree (Magister) in corporate legal protection from Humboldt University, Berlin. From 1997 to 2003, he served as Chief Operational Officer of Mologen AG, responsible for intellectual property protection and corporate strategy. He has obtained the qualification as European Patent Attorney and is currently independent partner of several businesses. Adam Levy has a Natural Sciences degree from Cambridge University and an MBA from INSEAD, Paris, and has held senior management positions in several biotechnology companies.

Preface

XI

Authors

XV

Abbreviations

XVII

1 Terminology

1

(18)

Claas Junghans

1.1 The Terms of Patenting

1

(15)

1.1.1 The Patent

1

(1)

1.1.2 The Process of Patenting

2

(4)

1.1.3 The Value in a Patent

6

(3)

1.1.4 Anatomy of a Patent Document

9

(4)

1.1.5 Patentability of an Invention

13

(2)

1.1.6 Inventors and Applicants

15

(1)

1.2 Business Brief

16

(3)

2 The Economic Objectives of Protection

19

(16)

Claas Junghans

2.1 Filing Strategy

20

(5)

2.1.1 When to File?

20

(1)

2.1.2 Where to File: National Offices and International Treaties

20

(4)

2.1.3 Where to First File?

24

(1)

2.1.4 Follow-up Filings and the Territorial Extent of Protection

24

(1)

2.2 Claim Breadth: The Scope of the Desired Protection

25

(1)

2.3 Factors Influencing Filing Strategy and Claim Breadth

25

(7)

2.3.1 The Invention, the Product and its Market

25

(1)

2.3.2 Market Economics

26

(2)

2.3.3 Technology Density

28

(1)

2.3.4 The Commercialisation Plan

29

(2)

2.3.5 The Competition

31

(1)

2.4 Financial Resources and Attitude Towards Risk

32

(1)

2.5 Business Brief

33

(2)

3 Patenting

35

(34)

Claas Junghans

3.1 Preparation

35

(9)

3.1.1 Planning

36

(1)

3.1.2 Assembling Material

36

(2)

3.1.3 Researching the Literature

38

(6)

3.2 Drafting the Patent Application

44

(9)

3.2.1 Attorneys

44

(2)

3.2.2 The Initial Filing as a Basis for Amended Claims

46

(4)

3.2.3 Non-Obviousness

50

(2)

3.2.4 Unity

52

(1)

3.3 Prosecution

53

(5)

3.3.1 Formalities

53

(1)

3.3.2 Representation

54

(1)

3.3.3 The Process

55

(3)

3.4 Strategy

58

(6)

3.4.1 Overview

58

(1)

3.4.2 Patenting an "Invention in Progress"

58

(5)

3.4.3 Patent Deadlines Driving Development

63

(1)

3.5 Conflict

64

(3)

3.5.1 Opposition

65

(1)

3.5.2 Revocation

65

(1)

3.5.3 Infringement

66

(1)

3.6 Business Brief

67

(2)

4 Ownership

69

(12)

Rolf Sander

4.1 The Rights of the Inventor

69

(3)

4.1.1 What is an Applicant?

70

(1)

4.1.2 Applicants in the United States of America

70

(1)

4.1.3 Joint Applicants

70

(2)

4.2 Disputed Ownership

72

(1)

4.2.1 Interference Procedure in the United States of America

72

(1)

4.3 Employee or Service Inventions

73

(8)

4.3.1 Germany

74

(1)

4.3.2 United Kingdom

75

(1)

4.3.3 France

76

(1)

4.3.4 Spain

76

(1)

4.3.5 Russia

77

(1)

4.3.6 USA

77

(1)

4.3.7 Japan

77

(1)

4.3.8 Korea

78

(1)

4.3.9 China

78

(1)

4.3.10 Hungary

78

(1)

4.3.11 Czech Republic

79

(1)

4.3.12 Poland

79

(1)

4.3.13 Sweden

80

(1)

4.3.14 Conclusion

80

(1)

5 Trademarks and Designs

81

(16)

Tobias Boeckh

5.1 Protection of Distinctive Marks

81

(11)

5.1.1 Trademark Protection

82

(8)

5.1.2 Internet Domains/e-Commerce

90

(1)

5.1.3 Trade Names, Company Names and Titles

91

(1)

5.1.4 Appellations of Origin

91

(1)

5.1.5 Enforcement of Rights

91

(1)

5.2 Designs

92

(6)

5.2.1 What is a Design?

92

(1)

5.2.2 National and International Protection of Designs

93

(1)

5.2.3 How and Where are Designs Registered?

94

(1)

5.2.4 Implementation of Design Rights

95

(2)

6 Licensing

97

(22)

Jan Dirk Heerma

6.1 Licence Agreements – an Overview

98

(8)

6.1.1 Introduction to Licensing

98

(1)

6.1.2 Subject

98

(1)

6.1.3 Scope

99

(2)

6.1.4 Exclusivity

101

(1)

6.1.5 Term and Termination

101

(2)

6.1.6 Consideration

103

(3)

6.2 Sub-Licences

106

(1)

6.3 Up-Front Payments

107

(1)

6.4 Milestone Payments

108

(1)

6.5 Non-Cash Consideration

108

(1)

6.6 Taxation of Consideration

108

(1)

6.7 Representations and Warranties

109

(1)

6.7.1 Ownership

109

(1)

6.7.2 Third Parties' Rights

109

(1)

6.7.3 Other

110

(1)

6.8 Maintenance and Prosecution of IP Rights

110

(1)

6.9 Confidentiality

111

(1)

6.10 Competition Law

111

(3)

6.10.1 General Principles

111

(1)

6.10.2 European Competition Law

112

(2)

6.10.3 US Competition Law

114

(1)

6.11 Governing Law and Dispute Resolution

114

(3)

6.11.1 Governing Law

115

(1)

6.11.2 Dispute Resolution

116

(1)

6.12 Negotiating Licence Agreements

117

(1)

6.13 Business Brief

118

(1)

7 Starting up and Financing Your Venture

119

(24)

Adam Levy

7.1 Risk, Return and Control

119

(7)

7.1.1 What is the Return?

120

(1)

7.1.2 Understanding Risk

121

(1)

7.1.3 Managing Risk

122

(1)

7.1.4 Control

123

(2)

7.1.5 Inventive Myopia

125

(1)

7.2 Strategy

126

(2)

7.2.1 Strategic Alignment

126

(1)

7.2.2 Flexibility and Commitment

127

(1)

7.2.3 The Extent of Product Development

127

(1)

7.3 Company Formation

128

(2)

7.3.1 Assignment of IP

129

(1)

7.3.2 Ownership Structure

130

(1)

7.4 The Business Plan

130

(2)

7.4.1 People

131

(1)

7.4.2 Invention

131

(1)

7.4.3 Market

131

(1)

7.5 Financial Forecasting and Valuation

132

(4)

7.5.1 Revenue Modelling

133

(1)

7.5.2 Cost Modelling

133

(1)

7.5.3 Net Present Value

133

(2)

7.5.4 Real-World Valuation

135

(1)

7.6 Financing the Venture

136

(4)

7.6.1 Start-up Funding

136

(1)

7.6.2 Angel Investors

136

(1)

7.6.3 Venture Capital

137

(1)

7.6.4 Shareholder Structures and Agreement

138

(1)

7.6.5 Working With Investors

139

(1)

7.7 Negotiation

140

(3)

8 The Importance of Business Structures to the Exploitation of IP

143

(8)

Christoph Regierer

8.1 Legal Forms of Transferring IP Ownership

144

(2)

8.2 Intellectual Property and Financial Reporting

146

(3)

8.3 Tax Aspects

149

(2)

8.3.1 Tax Considerations on the Company Level

149

(1)

8.3.2 Tax Considerations on the Shareholder Level

150

(1)

9 List of Annexes

151

(16)

Annex 1 Paris Convention for the Protection of Industrial Property (January 3rd, 2005)

152

(2)

Annex 2 PCT Contracting States (as of July 7th, 2005)

154

(3)

Annex 3 EPO member states and extension states as of July 2005:

157

(1)

Annex 4 Nice Classification of goods and services (8th edition) - Headings Goods and Services

158

(3)

Annex 5 International Classification for Industrial Designs under the Locarno Agreement - Headings Goods and Services

161

(1)

Annex 6 European Community Member States

162

(1)

Annex 7 Member countries of the Madrid Agreement and Madrid Protocol

162

(1)

Annex 8 ARIPO member states

162

(1)

Annex 9 OAPI member states

163

(1)

Annex 10 Country Codes

163

(4)

Index

167

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Intellectual Property Management A Guide for Scientists, Engineers, Financiers, and Managers

9783527312863

3527312862

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