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International IP Issues

International IP Issues. Federal Lab Consortium Meeting International IP Issues Dr Roisin McNally - European Patent Attorney 20 September 2006. IP Strategy. Major markets - US and Europe. Practical Advice. Costs. International IP Issues. International Patent Protection. File US

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International IP Issues

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  1. International IP Issues Federal Lab Consortium Meeting International IP IssuesDr Roisin McNally - European Patent Attorney 20 September 2006

  2. IP Strategy Major markets - US and Europe Practical Advice Costs International IP Issues

  3. International Patent Protection File US Application 12 Months 12 Months File Individual Overseas Applications File International PCT Application File European Application File Individual Overseas Application File European Application Granted European Patent Granted National Patents

  4. International Patent Protection • International (PCT) Application • Individual Overseas Applications • Regional Applications • Different claims/ different scope • Enforceability

  5. National / Regional Applications 12/30 months EP Search Examination Grant CA/JP - Exam Issue AU/NZ Exam Issue - US Exam Poss.C.I.Ps Issue National/ Regional Procedures

  6. US EP US / EP Procedural Differences First to inventGrace periods (prior art, deposits)Must disclose best mode Can with-hold publication Duty of Disclosure Continuation-in-part practice First to fileNo grace periodEnabling disclosureApplication publishes at 18 months No duty of disclosure No information can be added

  7. Patentable Subject Matter? US/EP Methods of Medical Treatment Methods of Diagnosis Computer Programs/Computer related IP Algorithms Plants/Plant varieties Animals/Animal varieties Contrary to “ordre public” Presentation of Information Technical Character

  8. Continuation-In-Part (“CIP”) • Common subject matter – original priority • Added subject matter – priority as of CIP filing • Useful to: • cover improvements • add 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.

  9. Best 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

  10. First to invent system • 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 witnessed • notebooks • invention disclosure forms • Priority contest is an “interference” • Rest of world – first to file

  11. Grace periods/ Biological deposits • Prior art • 12 month grace period for own disclosure • after 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

  12. Duty of Disclosure • Must disclose to USPTO all known information material • to patentability • All persons involved with application under duty • inventors • attorneys • Failure 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.

  13. U.S. Non-Publication • 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.

  14. Practical Tips and Costs • Consider overseas protection from the beginning • Remember first to file and not first to invent • For important inventions consider defensive patenting • Consider using different text for outside USA • Minimise translation costs where possible • Minimise claim numbers and categories • Review US text early for international issues • Consider subject matter and national requirements • Consider markets, competitors and enforceability – separately and together.

  15. International IP Issues Thank you for your attention. roisin.mcnally@murgitroyd.com www.murgitroyd.com Belfast, Dublin, Glasgow, Aberdeen, London, Nice Munich 011443078400 or 011442890320441

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