You want to commercialise your products with the support of external business partners? The story of this Italian SME, Celegon Srl, teaches us how crucial it is to take confidentiality measures and IP protection into consideration before entering into any business partnership.
Self-driving vehicles (SDVs) are expected to be commercially available from 2025 and recent statistics for patent applications reveal that innovation in SDVs is accelerating fast and could signal the coming of this transport revolution. By looking at patent applications in this field, it gives a unique insight into the race to innovate in smart, connected and automated vehicles.
In this respect, in co-operation with the European Council for Automotive R&D (EUCAR), the European Patent Office (EPO) has carried out a study providing a comprehensive picture of current trends and emerging leaders in SDV technologies.
The findings show that during the past six years, patent applications at the EPO for autonomous driving increased by 330%, compared to 16% across all technologies in the same period, and in the past ten years the EPO received some 18,000 patent applications related to self-driving vehicles, with nearly 4,000 in 2017 alone.
Click here for further reading on this study.
In 2016 the European Patent Office (EPO) and the Community Plant Variety Office (CPVO) signed a cooperation agreement to exchange information and best practices in the area of plant-related patents and plant variety rights. The cooperation between the two Offices has been extremely well received among European institutions, EU Member States, stakeholders and the public in general.
Last week, EPO and CPVO renewed their cooperation agreement for 3 more years envisaging the adoption of measures for sharing training tools with the public and for providing access to CPVO documentation via the EPO’s databases.
Find more information on their support of innovation in the plant sector here.
The following are a selection of our top 15 downloaded Fact Sheets that are now available in five EU languages:
German (DE), Spanish (ES), French (FR), Italian (IT) and Polish (PL).
- Fact Sheet on "Plant variety protection", available here.
- Fact Sheet on "Collection of evidence", available here.
- Fact Sheet on "How to define and manage background in Horizon 2020", available here
- Fact Sheet on "IP enforcement: asserting your rights", available here.
- Fact Sheet on "Design searching", available here.
- Fact Sheet on "The plan for the exploitation and dissemination of results in Horizon 2020", available here.
- Fact Sheet on "IP management in MSC Actions", available here in DE, ES, FR and PL for H2020 projects, and here in IT and PL for FP7 projects.
- Fact Sheet on "Domain names and cybersquatting", available here.
- Fact Sheet on "Copyright essentials", available here.
- Fact Sheet on "Trade secrets: An efficient tool for competitiveness", available here.
- Fact Sheet on "Intellectual property management at trade fairs", available here.
- Fact Sheet on "IP Audit: Uncovering the potential of your business", available here.
- Fact Sheet on "Non-disclosure agreement: a business tool", available here.
- Fact Sheet on "Intellectual property relevance in internationalisation", available here.
- Fact Sheet on "Technology Licensing-in", available here.
As of 1 November 2018 the EPO will participate in the WIPO Digital Access Service (DAS) for the exchange of certified copies of patent applications concerning priority documents.
The purpose of DAS is to establish a cost- and time-effective electronic system for processing and exchanging priority documents within participating patent offices, by relieving the applicant of the need to submit the documents to the Office of First Filing.
Find further information here.
This Bulletin issue is dedicated to IP and agribusiness, focusing on topics under current debate.
Jean-Luc Gal introduces this issue with the Notice issued by the European Commission on the Biotech Directive and the subsequent developments. The European Seed Association (ESA) explains the interface between patents and plant variety rights (PVR) which led to the creation of the PINTO database.
The CPVO provides an overview on the administrative arrangement for a bilateral cooperation between the EPO and the CPVO, while EPO speaks about patentable inventions relating to plants and animals. Juan Antonio Vives-Vallés, Assistant Lecturer at the University of the Balearic Islands, focuses on the balance between IP systems and the future of crop innovation in Europe in the light of the new breeding techniques.
In this issue 4iPCouncil has interviewed the CEO of Vitirover, an SME that has used IP to protect its sustainable and efficient invention in the field of agribusiness. Philipp von Kapff and the CPVO have contributed a joint article on the interface between trade marks and variety denominations, and Massimo Vittori, Managing Director of oriGIn, writes about geographical indications and sustainability.
In addition, Marco Musumeci, from the United Nations Interregional Crime and Justice Research Institute (UNICRI), focuses on counterfeiting and food frauds, while Philippe de Jong and Elena Bertolotto, from the Altius law firm, explain to us the first compulsory licence case before the CPVO, posing the question on how to strike the balance between PVR and the public interest.
Finally, the International Union for the Protection of New Varieties of Plants (UPOV) presents to us their new electronic application system, UPOV PRISMA, and the International Seed Federation provides us with their position paper on illegal seed practices.
As per usual, the Bulletin reports information about the European IPR Helpdesk’s past and future events together with the latest updates from our Helpline service, as well as a brand-new agribusiness quiz and our usual patent quiz.
Dr Edelbert Häfele is a publicly appointed and sworn expert for valuation and utilisation of intellectual property rights. He holds a Ph.D. in Engineering from the Technical University of Karlsruhe, Germany.
His professional career started in 1985 when he founded a consulting firm focusing on environmental and process technology. Five years later, he entered a joint venture agreement with a supplier for car manufacturers.
In 2001, Edelbert became the Chief Executive Officer of PATEV, one of Europe’s market leaders for intellectual property management services. Besides focusing on the evaluation and utilisation of patents in companies, PATEV also offers associated services for the analysis and creation of effective patent items (patent engineering) and patent transfers.
How do we make sure that no critical patents are published after the Freedom-to-operate (FTO) and not considered, e.g. during a development project?
Dr Edelbert Häfele: You need to have efficient competition monitoring in place, i.e. an ongoing monitoring of relevant technologies, features and competitors which helps to keep track of relevant documents and also includes the ability to monitor the legal status of identified applications. In addition, it is always recommended to conduct an FTO search once the definite features of the products are finalized.
How many documents are typically resulting from an FTO and have to be reviewed?
Dr Edelbert Häfele: The central point in this context is the categorization of the relevant documents. For example, in PATEV’s FTO solution, the most important categories are 4 and 5 which are defined as follows:
Category 4: Further technological reconciliation is recommended as a precaution. This can be done internally. It seems rather unlikely that conflict potential can be deduced here, but this can only be excluded on the basis of internal knowledge of the customer company.
Category 5: Relevant intellectual property rights for which a detailed examination is required. There is a high probability that an attorney is needed for a final clarification.
To answer the initial question, for the FTO Statement:
Product FTO: Category 4: five to twenty documents. Category 5: less than ten documents.
Technology FTO: Here, the number of documents varies a lot depending on the technological scope, definition of features and the concreteness of the development project.
What are main aspects one has to keep in mind while defining the framework for an FTO search? Sometimes, too many documents in the result hits are overwhelming.
Dr Edelbert Häfele: Restrict search to specific relevant jurisdictions. Only include patents younger than 20 years (patent term). Make sure to optimize the search profiles to get less out-of-focus documents. The categorization system for the resulting documents reduces the workload for the company and the attorney to a minimum.
Is it possible to miss relevant patents in an FTO search?
Dr Edelbert Häfele: Yes, it is possible for recent applications which are not yet published. Also, an incorrect classification can result in a miss. But it is important to understand that a professional FTO search will identify the relevant or blocking patents with high accuracy. FTO search is complex in nature and because of its complexities, highly skilled professionals are needed.
It is the freedom to operate that keeps you in the market
Written by Dr Edelbert Häfele, CEO of PATEV
A patent gives you the competitive edge, but it is only the freedom to operate that keeps you in the market
Change is the only constant, and in today’s business world, change is faster than ever before. In this fierce competition, patents play a key role for a business to gain a competitive edge. But it is important to understand, having a patent does not include the right for freedom to operate.
Freedom to Operate, abbreviated as FTO, in simple words is the ability to perform a particular commercial activity of your technology/product/service without infringing third party’s valid Intellectual Property (IP) rights.
This necessitates for an FTO search that can make you aware of third party IP which are enforceable in a specific country in which your product/service will be commercialized.
An FTO search should be carried out at an early stage of a product development
Here, PATEV presents a real case which shows how an early stage FTO search and analysis was proved to be critical for Company X in its product development strategy.
Technology readiness level (TRL) of company X: Early stage.
FTO search results: A critical patent family with broad claim coverage was identified. The claim chart analysis showed that the scope of protection was not only relevant for the specific idea but also for future developments planned in a similar direction. The family had 2 members, one of which had already been granted in China and the other one was a still pending German patent application, if granted, Company X’s new idea for the future product would be infringing the German patent.
A continuous monitoring of the legal status of the German patent application was conducted for few months until it was observed that the application was dropped by the applicant. Hence there was no threat from this application in Germany. However, Company X has to be careful and watchful about the granted patent in China, in case Company X would like to expand its business and commercialize its future product in China.
What if the German patent application had not been dropped by its applicant and eventually got granted? We call it now a blocking patent.
Company X would have had to take one of the following strategies
1) Design around/modify the product, 2) licensing-in or partnership, 3) opposition, 4) prepare for litigation with arguments or acquire offensive patents against the blocking patent, 5) if nothing is feasible, abandon the project.
Now imagine a totally different scenario, where Company X didn’t conduct an FTO search early enough and hence is totally unaware of the enforceable third-party IPs. Company X invests money, time and resources on developing this product which could potentially infringe the blocking patent. Company X incurs a huge development loss once it learns about the blocking patent just before the launch through an FTO search at that point. Much adverse situation can arise, when Company X never cared for an FTO search at any stage of its product development and went ahead with the launch; Company X can get sued for patent infringement whereby the litigation risk is rising with the success and popularity of the new product.
Through an FTO search carried out at an early stage of a product development, you know your threats early and can prepare for a feasible risk mitigation.
How can FTO solutions be aligned with respect to the different SME Instrument phases in the context of HORIZON 2020? How is an FTO analysis conducted in practice? Learn more in our related webinar on November 14, 2018.
Please download the PDF version of the article below.
PATEV examines, evaluates and shapes patent portfolios, adds the right design to technologies and inventions, and provides consulting support during patent related corporate activities.
Since its foundation 10 years ago, PATEV has continuously expanded its range of services. Today PATEV counts among the leading companies worldwide in the field of Intellectual Property (IP) Management. PATEV has branch offices in Karlsruhe, Düsseldorf, Hamburg and Munich as well as network partners in Switzerland, France, Italy, Great Britain, the United States and Japan.
The World Intellectual Property Organization (WIPO) and the International Federation of Pharmaceutical Manufacturers and Associations (IFPMA) have launched a new online tool designed to provide easy access to medicine patent information.
The Patent Information Initiative for Medicines (Pat-INFORMED) tool is a unique resource where patent holders provide information about patents covering approved medicines through a free, open access database.
Anyone can search the Pat-INFORMED database simply by entering a medicine’s INN (International Nonproprietary Name) to obtain relevant information about the status of a patent in a particular country. The database includes 14,000 individual patents for now.
Please click here to access the Pat-INFORMED database.
The 2018 publication of the World Intellectual Property Office (WIPO) series of guides on IP for business focuses on patents.
Patents are a crucial tool to enable a company to draw maximum benefit from new technological ideas.
Download the publication here.