iprs intelec tual property rights · commission a patent invalidity search in order to prove the...

© Clarke Modet & Cº 2013

Líderes en Propiedad Industrial e Intelectual en países de habla Hispana y PortuguesaLíderes en Propiedad Industrial e Intelectual en países de habla Hispana y Portuguesa

IPRs Intelec tual Property

Rights

Jornadas Doctoriales Transfronteras Palma de Mallorca, 12.12.14


“Innovation differentiates a leader from a follower” Steve Jobs


PATENT TECHNOLOGY TRANSFER

EUROPEAN PATENT

PCT INTERNATIONAL

PATENT

UTILITY MODEL

DESIGN PROTECTION

INDUSTRIALDESIGN

COMMUNITY DESIGN

UNFAIR COMPETITION ACTION

SOFTWARE VALUATION

KNOW-HOW

DESIGNATION OF ORIGIN

DOMAIN NAME REGISTRATION

TRADEMARK PROTECTION

EUROPEAN COMMUNITYTRADEMARK

PLANT VARIETY PATENT

PLANT VARIETY PATENT

COPYRIGHT REGISTRATION

INTERNATIONALREGISTER

BRANDVALUATION

TECHNOLOGY LICENSING

AGREEMENTS


FOREIGN UNIVERSITIES

CM FOREING UNIVESRITIES TEAM (INFRAESTRUCTURE)

UNIVERSITY SERVICE POINT OF CONTACT

USA CANADAMain office in Mexico/Mexico DF (Ms. Teresa Rivera)

EUROPE & AFRICAMain office in Portugal/Lisboa (Ms. Dina Chaves)

ASEAN AREA Main office in Spain/Madrid (Benjamín Martínez)

TEAM SPECIALISED ON UNIVERSITY IP FOR EACH GEOGRAFICAL AREA IN

CLARKE, MODET & Cº



ARGENTINA Hernán CharreauBRASIL Gláucia GomesCHILE Francisco BavestrelloCOLOMBIA Norberto RodríguezMEXICO Tere RiveraPERU Cinthia Kuo PORTUGAL Dina ChavesESPAÑA Benjamín MartínezURUGUAY Fabiana PenadesVENEZUELA Alejandro Benvenuto

UNIVERSITY TEAM IN CLARKE,MODET & Cº

TEAM SPECIALISED ON UNIVERSITY IP IN EACH

CLARKE, MODET & Cº COUNTRY



ARGENTINA Hernán CharreauBRASIL Gláucia GomesCHILE Francisco BavestrelloCOLOMBIA Norberto RodríguezMEXICO Tere RiveraPERU Cinthia Kuo PORTUGAL Dina ChavesESPAÑA Benjamín MartínezURUGUAY Fabiana PenadesVENEZUELA Alejandro Benvenuto

UNIVERSITY TEAM IN CLARKE,MODET & Cº

SPECIALISED BACKGROUD

Public R&D and, in particular, University R&D are fully regulated by specific legislations that must be taken into account in our countries.ie. Spain:Spanish patent Act (art. 15 – 20 ) 11/1986Organic Law on Universities, Organic Law 4/20017Science, Technology and Innovation Act 14/2011Sustainable Economy Act 2/2011Royal Decree on the use and assignment of the inventions of public research bodies 55/2002 Public Sector contract act 30/2011Public Employee Basic Statute 53/1984 (on incompatibilities and limitations).. And other national and regional acts and decrees

Compliance with theses specific legal standards in force are mandatory in agreements

LEGAL ENVIROMENT

PUBLIC PROGRAMS

Participation in specific public programs Horizon 2020 (Europe), Iberoeka or CYTED (Latin America), National Public R&D programs,.. are based on their specific rules.


Technology Transfer

Innovation.....

IPR sale and purchase

Technological Surveillance

PATENTS

Traditional figures

R+D

INTELLECTUAL PROPERTY SERVICES

Intellecual Property management

.....Idea

Prospection


(EXCLUSIVE) SERVICES

Clarke, Modet & Cº has adapted his IP portfolio in order to cover specific needs of universities and public entities that operate in the Latin America countries.

We are aware of the specific profiles, rules, programs,.. that involves this area. Therefore we also have create a specific Team specialised in this area.


SERVICES FOR UNIVERSITIES


Technology Transfer

Innovation.....

IPR sale and purchase

Technological Surveillance

PATENTS

Traditional Institutions

R+D

INTELLECTUAL PROPERTY SERVICES SPECIALLY ADAPTED TO UNIVERSITIES NEEDS

Intellecual Property management

.....Idea

Prospection

NEW AREAS (TRADE MARKS, DOMAIN NAMES, FREE SOFTWARE, KNOW HOW, DATA & CONTENTS)

TECHNOLOGY INTELLIGENCE REPORT

EXPRESS TRANSLATION SERVICES

CONSORTIUM AGREEMENT

FREEDOM TO OPERATE

PARTNER SEARCH

UNIVERSITY LEGISLATION BENEFITS & EXCEPTIONS

COMPULSORY LICENSING

PATENT BROKERAGE

ON LINE LICENCE DATABASE AND RECORDINGS

MONITORING AND WARNING SERVICES

SPECIALISED LEGAL DEPARTMENT


• Breakdown analysis of all available technical information associated with a specific technological field (i.e. potential scientific-research and development partners or competitors), with the objective of drawing conclusions and provide guidelines for decision-making

• The detailed analysis focuses on technological trends, development stage of the technology under evaluation, new application areas, as well as information related to market environment.

Reduces risk in strategic planning by detecting and anticipating opportunities and threats

Guides on the best technological development strategy, identifying potential market niches and existing technical gaps

Detects key technical/commercial players, characterizing them as potential competitors, partners, investors, etc.

Analyzes potential barriers at business introduction: technological, legal, market, etc.

Benefits


12/2/2014 11


Technology Intelligence Modules

• Technology Intelligence Report are divided into 3 modules, each of them focusing ondifferent aspects of the technological market and contemplating specific clusters of analyses

• Said modules and types of analyses will be selected based on the project’s objectives,previously established by the client

TECHNOLOGICAL TRENDS

TECHNOLOGICAL COMPETITORS

MARKET ENVIROMENT

1 2 3


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TECHNOLOGICAL FIELDS

Localization of emerging technologies

EMERGING TECHNOLOGIES

TECHNOLOGICAL DEVELOPMENT

Appraise the Technology Development over time

TECHNOLOGICAL TRENDS1

TECHNOLOGICAL TRAJECTORIES

Categorization of technologies based in the International Patent Classification (IPC)

Citation analysis in the form of technology trees

How has the technology developed over time and which degree of maturity has been achieved so far

Which have been the patents with a stronger impact

Which are the different applications for a specific technology

Which are the emerging technologies and the newest R&D lines

Where are the new applications and opportunities for a specific technology

Example of analyses Conclusion

12/2/2014 13


Detects key technical/commercial players and characterizing them as potential partners in our area is a critical step undertaking certain R&D projects

PARTNER SEARCH


ie. Public R&D Programs such as Horizon 2020 (Europe) requires huge searching efforts to get the correct partner.

Thanks to or Intelligence Department we can help in the searching , detecting and puting in contact with the most adequate counterpart


DEFINITION AND OBJECTIVES

Diagnose of the free commercialization of a technologyin a specific country, ensuring that the commercialproduction, marketing and use of a new product, processor service does not infringe the IP rights of others.

Commercializing an invention involves a considerable expenseboth in terms of time and resources.

The risk of being blocked from making, using, selling, orimporting an invention is becoming a growing threat, especially inpatent-intensive sectors.

A FTO or Clearance investigation is essential in order tominimize risks of infringing potentially valid patent rights ofthird parties. This activity allows to provide a roadmap that canhelp steer clear of such risks.

FREEDOM TO OPERATE

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1. Taking decisions on the exploitation of a technology in aspecific country, be it manufacturing, selling, importing ormaking use of products or services without infringements tothe IP rights of third parties.

2. Defining marketing and commercial strategies based on theexisting IP opportunities, e.g. expiring patents, limited scopeof claims, limited territorial coverage.

3. Analyzing technologies of interest prior to the acquisition ofpatent assets, such as an in-license or acquisition of acompany or division, as the value of the patent assets isdetermined by the ability to practice the claimed technology.

KEY BENEFITS AND USES

12/2/2014 16


If the patent search reveals that there are one or more patents that limit thefreedom to operate, business decisions must be taken. Most commonstrategies for having Freedom to Operate are the following:

Commission a Patent Invalidity Search in order to prove the invalidity of theblocking patent(s).

Initiate design-around activities, steering research or making changes to theproduct or process in order to avoid infringing on the patent(s) owned by others,thus avoiding the need to pay a licensing fee.

Purchase the patent or in-licensing - the convenience of such an agreement willdepend largely on the terms and conditions of the proposed license.

Cross-licensing, that is, making an exchange licenses in order to be able to usecertain patents owned by the other party.

Patent pools - mechanism by which two or more companies put their patents in apool to establish a clearinghouse for patent rights.

FTO REPORT - CONCLUSIONS

12/2/2014 17



PATENTS TRADEMARKS TEC. TRANSFER SOFTWARE

LICENSES

CPP

Pharmaceutical Sector

LICENSE

Sponsorship

Publicity

Merchandising

Negotiation

Training

Control

Software Licenses and Open Source

PROTECTION

NULLITY ACTIONSCANCELLATION ACTIONSUNFAIR COMPETION

ADMINSTRATIVE APPEALSCEASE & DESIST LETTERCONTENTIOUS ADMIN. APPEALS

CUSTOMS

DEFENCE

POLICE PROTECTION

SIMPLIFY PROCEDUREJUDICIAL ACTIONS (CIVIL AND CRIMINAL)UNFAIR COMPETITION

CIVIL AND CRIMINAL

INDUSTRIAL PROPERTY

INTELECTUAL PROPERTY

a b

DOMAIN NAMES

REGISTRATION

SURVEILLANCE

DEFENCE AND RECOVERY

TRADEMARKS IN INTERNET

PROTECTION

REGISTRATION

FILING

TRANSFER AGREEMENTS

DEFENCE

CIVIL AND CRIMINAL ACTIONS

NEW BUSINESS MODELS

DIGITAL CONTENTS

LICENSESEXPLOITATION AGREEMENTS

TERMS OF USE LEGAL ADVICE

WEB 2.0 PROTECTION

CLARKE, MODET & Cº LEGAL DEPARTMENT

EXPLOITATION



CONSORTIUM AGREEMENT

UNIVERSITY LEGISLATION BENEFITS & EXCEPTIONS

COMPULSORY LICENSING



PATENT WORKFLOW PROPOSAL

PATENT REGISTRATIONB

SPANISH PATENT APPLICATIONS

Rights only in Spain.

EUPOPEAN PATENT APPLICATIONS

Rights in the CUP countries in which the granted Patent hasbeen validated.

INTERNATIONAL PATENT APPLICATIONS (PCT)

Rights in the PCT Countries, designated when entering intonational phase of the PCT procedure, and only if thecorresponding national procedure has granted the patent.

According to the Decision of the IP Board, our team will manage the whole nationalor international registration process for you patents (when requested)

12/2/2014 21




FILING APPLICATION

FORMAL EXAM

REQUEST SEARCH REPORT (IET)

PUBLICATION OF THE APPLICATION AND SEARCH REPORT

GENERAL PROCEDURE PROCEDURE WITH PRIOR EXAMINATION

GRANT GRANT REFUSE

0

15

18

36

Spanish Patent Applications : General ProcessTIME FRAME (months)

12/2/2014 22




Spanish Patent Applications: differences between both procedures for granting

PUBLICATION OF THE EXAMINATION REQUEST

GENERAL PROCEDURE

FILING COMMENTS FROM THIRD PARTIES

GRANT

PUBLICATION OF THE ELECTION OF GENERAL PROCEDURE

PROCEDURE WITH PRIOR EXAMINATION

FILING OPOSITION FROM THIRD PARTIES

RESULT OF THE EXAM

GRANT

GIVE ARGUMENTS IN DEFENCEOEPM RESOLUTION

GIVE ARGUMENTS IN DEFENCE

REFUSEGRANT

IF POSITIVE IF NEGATIVE

2

2

2

TIME FRAME (years)

TIME FRAME (years)

12/2/2014 23




European Patent Applications : General Process

European Application

Search Report + Written Opinion

PUBLICATION

EXAMINATION

GRANT

ValidationNational Patent

18

36

Opposition

Maintenance

6 months from publication to answer to the SR and WO

REFUSE

TIME FRAME (months)

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International Patent Applications : PCT

INTERNATIONAL PHASE NATIONAL PHASE

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PCT Application

ISR + WO

PUBLICATION

PRELIMINARY EXAMINATION (OPTIONAL)

National procedure National procedure National procedure

30/31 months

3 months from ISR or22 months from priority(art. 34 amendments)

18 months

~16 months(art. 19 amendments 2 months from reception or 16 from priority)

International Patent Applications : PCTTIME FRAME (months)

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Services for the Filing & Prosecuting of Patent Applications

Expert advice on modalities, routes and scope ofprotection for the innovation. E.g. Ordinarypatents, Patents of addition, Conventionapplication.

Preparation of technical and administrativedocumentation for submission of application.

Patent translation, including front-page, claims,specification, figures and legal status and so forth.

Handling office actions and PTO correspondencesfrom various jurisdictions.

Maintenance service and payment of fees toguarantee the validity of the IP Rights.

12/2/2014 27



PATENT EXPLOITATION AND DEFENSEC

Oppositions and Infringements

Alerts Litigation IP Agreements Licensing IP

Valuation

Services Related to the Exploitation and Defense of IP Rights

Writings of opposition to patent applications of third parties.

Patent infringement reports .

Writing requests and summons to infringers.

Continuous surveillance at a national and international level to detect new patents that could infringe our client’s existing IP Rights.

Criminal Actions to tackle civil offenses / usurpation of IPR.

Civil actions for the annulment of IPRs and defense against such actions.

Administrative appeals to dispute resolutions of the OEPM.

Development of IP Policies.

Drafting of Agreements, including Employee Agreements, Confidentiality/Non-Disclosure Agreements (CDA, NDA), Memorandum of Understanding (MoU), license, etc.

Analyzing a patent to identify key companies and their products, revenues, etc.

Identify royalty rate and licensing terms for a particular patent.

Economic valuation and appraisal of IP rights for multiple purposes: M&A, JV, Tax & Transfer Pricing, Securitization of IPR, sale & licensing of IPR, litigation..12/2/2014 28


COMPLEMENTARY IPR ACTIVITIES

Some inventions might not be suitable to be protected by patent applicationsdue to different reasons: lack of sufficient novelty or inventiveness, software, etc.

Nevertheless, these innovations might be still be valuable for SAMSUNG and couldbe protected by other IP figures, chiefly:

INDUSTRIAL DESIGN INTELLECTUAL PROPERTY (SOFTWARE)

IPR that protects the visual design ofobjects, including the shape,configuration or composition of patternor color, or combination of pattern andcolor in two or three-dimensional formcontaining aesthetic value.

Registered National, Community andInternational designs are available,which provide a right covering thespecific country, European Community orXX countries respectively.

Protection is for up to 25 years.

Computer programs are treated asliterary works for the protection throughCopyright. The scope of protectionavailable covers the program,preliminary information, technicalspecifications, user manuals, successiveversions and derivative programs.

Protection in a country implies extensionto other countries (by internationaltreaties).

Duration of rights for legal entities is 70years after disclosure.12/2/2014 29



Industrial Design: General Process

FILING APPLICATION

EXAMINATION

GRANT

REFUSE REGISTRATION

PUBLICATIONINVALIDITY

DEFERRED PUBLICATION

APPLICATION ACCEPTED

APPLICATION REFUSED

IF FEES OK

INVALID

NOT INVALID

REPRESENTATION BEFORE THE OHIM/OEPM

INSPECTION OF FILES AND COPIES

CHANGES TO THE REGISTER

MEDIATIONAPPEAL12/2/2014



Intellectual Property (Software): General Process

How can we protect intellectual creations against third parties?

Legal Measures Corporate Actions

• Registration in the Intellectual Property Registry.

• Indication of the symbol:

• Legal Deposit.

• Notarial deposit.

• Civil and criminal actions.

• Contracts of recognition of ownership.

• Confidentiality agreements, exclusivity, non-competition, concurrence.

At the time when the work was created

How does copyright arise?

SETTING UP

EVIDENCE

12/2/2014


• We have unrivalled IP expertise in Spanish and Portuguese speaking markets. For over 135 years we have been providing global expertise with high local knowledge

The Largest IP Group in Spain, Portugal and Latin America

• We offer in-depth understanding of the local practice through a network of wholly owned companies

Our Strength: Global view with strong local expertise

• We take a hands-on involvement throughout each case and work closely with our clients providing a global view of their cases

10 Companies and 32 branches in 10 Countries

• Multidisciplinary teams with extensive international experience, formed in law, science, and technology provide tailor-made solutions to our clients

Over 460 professionals advice in all areas of Intellectual Property

Clarke, Modet & Cº


Clarke, Modet & Cº worldwide

We can cover all Latin America with our wholly-owned companies and a trusted high quality network of IP agents carefully selected and annually reviewed


Our Team

More than 75 patent attorneys with an average of 13 years of experience are qualified in the fields of mechanical engineering, physics, chemistry as well as IP lawyers, among others

Multidisciplinary teams are created for international projects, enabling us to develop tailor made solutions for each project

Our IP specialists providecomprehensive range of IP legal and consultancy services covering LatinAmerica, Spain and Portugal

Our technical staff have engineering degrees, some with PhDs, whilst many have been practitioners in their specialist industries


Our Team

Pharma, Bio, Chemist

Background; 54%Other technical Background; 15%

Mechanical, Electronics,

Telecommunications Background; 31%

Technical Background

We have in-house experts on each technological area that includes mechanics, electronicsengineering as well as chemistry and materials sciences that advice from the technical and legal point of view on how to obtain the patent right, according to our local legislation. We review each claim according to the local law thus, avoiding unnecessary patent applications


Our Expertise

• Designing patent portfolio management strategies, based on soundknowledge in specific figures such as supplementary protectioncertificates, orphan drugs regulation, deposit of microorganisms, clinicaltrial process, etc.

• Legal counsel according to the specific legal and institutional framework:Drafting Technology or data Transfer agreements, MOUs

• Assessing case law trends in Latin America, Spain and Portugal to bestposition our clients’ inventions

• Providing formal opinions on Patent Infringement: conducting Freedom toOperate reports in Latin America, Spain and Portugal

• Analyzing opportunities to generate revenue from technology and IPrights, from licensing programs to collaborative proposals

• Advising multinationals in the pharmaceutical sector on strategies tooptimize costs and reduce unnecessary official actions in countries with avery restrictive legislation


Our Expertise

• Handling patent/enforcement litigation cases providing ourclients with legal opinion and advice on enforcement, coveringstrategy prior to litigation and in court

• Advising innovator companies in commercializing theirtechnology in Latin America in order to avoid others IP rightsinfringement

• Our clients portfolio include multinational pharmaceuticals,biotech companies, electronic, computer and mechanicalcompanies, computer technology and software, as well asuniversities, SMEs and R&D centers worldwide


• An extensive experience in patent prosecution in LatinAmerica. As a Group, we have handled more than 11.000patent filings in the last 12 months

• Our Centralized Service: one single order covering severalcountries, one key account manager, one single power ofattorney, one single invoice and one Spanish translation of theaccepted patent

• The first IP agent in Spain to hold the ISO 9001:2008 QualityManagement System for all our services

Why Clarke, Modet & Cº


Líderes en Propiedad Industrial e Intelectual en países de habla Hispana y Portuguesa


Thank You !!

Bartolomé [email protected]

iprs intelec tual property rights · commission a patent invalidity search in order to prove the...

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