Patent Litigation (Filing Strategies, Cost Reductions, Claim Drafting)

1. Patent Litigation(Filing Strategies, Cost Reductions, Claim Drafting) • Gerhard LOSENICKY • at APO since 1991 • Examiner for 15 years • since 2006 Department: Patent Support / PCT Gerhard Losenicky

2. topics • Litigation • timeline • letters • court proceedings • preliminary injunction • nullity • Filing Strategies • Cost reduction • Claim drafting Gerhard Losenicky

3. litigation • 2 types of litigations • infringement (products at the market)lawsuit against someone who brings a copy of a patented product on the market (civil courts, commercial courts) • nullity (patent itself) lawsuit against an existing patent (federal patent court, patent office) Gerhard Losenicky

4. litigation define strategy patentee a productto market licence agreement bring to court (preliminary injunctions) warning letter notice for production of legitimacy nullity a copy to market torpedo infringer possibilities Gerhard Losenicky

5. litigation • Notice for production of legitimacy claim • Sure, that the possible infringer has no right to sell the product • In contrast to later warning letter: • No influence to procedural costs, if “infringer” has right to use • Exchange opinions concerning the right to use • Additional information about prior art, right of prior use… • Makes only sense, if patentee intention is to bring case to cort Gerhard Losenicky

6. litigation • Licence agreement • Litigations are expensive • Nobody can be sure to win lawsuit (->all or nothing) • Competitor does not develop own, new, inventive products • Cross licensing can bring additional technology • Earns money for further developments • Earnings, where is up to now no market for own company Gerhard Losenicky

7. litigation • Warning letter • Demand to stop selling infringing products • No reaction: • Case can be brought to court • Preliminary injunction might be possible • ! Damages can be entitled, if warning letter is unlawful • ! It can provoke counterclaim to obstruct lawsuit (torpedo) Gerhard Losenicky

8. litigation • Court proceedings • 60-70 % in Germany - and 60 % of them in Düsseldorf • Procedure • Formal early hearing (after 1-2 months) • Defendant’s response (after 4-5 months) • Plaintiff’s second write (after 7-8 months) • Defendant’s response (after 10-11 months) • hearing (after ~12 months) • Loosing party has to reimburse winner’s costs • € 100.000.- for simple Mechanical matters • € 500.000.- for complex electronic/pharmaceutical matters Gerhard Losenicky

9. litigation • Preliminary injunctions • Pre-conditions • The technical facts are straightforward / infringement is clear • No reasonable doubts about the validity of the patent • Urgency (patent is about to expire / “torpedo”) • Burden of Proof by applicant • Without hearing / with hearing (if court has doubts) • Duration ~ 2 – 6 months Gerhard Losenicky

10. litigation • Torpedo • Possible only at EU level (Basis: Art. 27 Council Regulation) • If there is a case on a court in one member state, no further applications in other states in the same case are allowed • Infringer brings case “negative application for a declaration” to a very slow court (e.g. CH and DK) “forum shopping” • Other courts in EU are blocked and have to wait Gerhard Losenicky

11. litigation • Nullity • Against the patent • Reasons for nullity • Lack of novelty, inventive step and technicality • Insufficient disclosure • Broadening the scope is not allowed • Results • Patent completely invalidated • Patent partly invalidated • Patent completely confirmed Gerhard Losenicky

12. filing strategies • Filing Strategies (technical IP-rights) • IP rights without a patent or an utility model • IP rights with a patent or an utility model • Open innovation Gerhard Losenicky

13. filing strategies • IP rights without a patent or an utility model • Disclosure • from publishing day on -> no patent application is possible • if invention is not such important, also competitor cannot file • result is a free use of the invention • Keep secret • dangerous and risky • invention should not be seen in the sold product (reverse engin.) • possibility for methods • Fast change of products (short product cycle) Gerhard Losenicky

14. filing strategies • IP rights with a patent or an utility model • Filing in states were competitors are • Only a few big competitors (paper machine producers) • Product cannot be produced by the competitor • Filing in states were customers are • Where can I sell my products to a good price • To spare costs, only as few states as necessary • Filing in key-states(a mixture of the 3 above mentioned Gerhard Losenicky

15. filing strategies • Open innovation(who made the R & D process) • traditional approach (closed innovation) • each company did their own R & D • new products came only from their own R & D department Gerhard Losenicky

16. filing strategies • traditional approach (closed innovation) • that leads into different isolated company developments Gerhard Losenicky

17. filing strategies • Open innovation boundary of companies are open • exchange of research results in and out of the company • getting new technologies faster and often cheaper • licensing in and out • file patent application in time Gerhard Losenicky

18. cost reduction • Cost reduction • Start with national patent application • Normally the cheapest way to get the priority date • Get a national Search Report within the priority year • Result of the Search Report is important for international activities • Continuing with a PCT application • Costs about € 2.800.- but get big gain of time (up to 30/31 months) • Translation in EN, FR or DE necessary (1 month after filing) • 2 ½ years time to file national/regional applications • Time enough to estimate which states are necessary • Filing only in key-states (regional patent offices) • Take care of costs of a patent attorney Gerhard Losenicky

19. cost reduction PCT – contracting states Gerhard Losenicky

20. cost reduction PCT* - Patent application DE - patent FR - patent EP - Pat.- Office HU - patent 1 US - Pat.- Office US - patent PCT - procedure ZA - Pat.- Office ZA - patent • Search Report SG - Pat.- Office SG - patent TR - application • publication TR - patent 6 12 18 24 30 36 months 0 priority year *PCT….Patent Cooperation Treaty 1 2 3 Gerhard Losenicky

21. claim drafting • Claim drafting • Claims have to clearly describe the invention • Only one invention per application • Claims for methods and apparatus • No functional claims allowed • Special fees for large number of claims at EP • 16th to 50th claim - € 210.- for each claim • from the 51 claim - € 525.- for each claim • Other Patent Offices have also special fees (DE, AT) Gerhard Losenicky

22. Thank you for your attention Gerhard LOSENICKY Tel.: 0043 – 1 – 53424 -372 E-mail: gerhard.losenicky@patentamt.at Gerhard Losenicky