See it here:
www.ipjur.com/2004_03_01_...367651024085
An interesting development which may add to the uncertainty of EU protection? Less movement of foreign capital and manufacturing to the EU? I wonder.
www.ipjur.com/2004_03_01_...367651024085
An interesting development which may add to the uncertainty of EU protection? Less movement of foreign capital and manufacturing to the EU? I wonder.
posted by:
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Connecticut
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Re: EU Community Patent Dead!?
Thu, March 18, 2004 - 4:25 PMHi Thomas, I'm a patent attorney in the US who has prosecuted and litigated domestically but only prosecuted abroad. Have you any experience with overseas patent litigation? Many clients have asked me about the value of foreign patents, and I really don't have a good answer for them. What has been your experience? -
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Re: EU Community Patent Dead!?
Fri, March 19, 2004 - 6:41 AMBarry,
Great question. It raises many issues and I will try to give a brief answer.
You are not alone when it comes to this client question. The best answer is, “it depends”. While this may be the typical attorney response, in this particular situation it represents the client’s need to focus on their current operations and long term business plan. Typically this involves the client doing an analysis of the physical properties of the foreign location (geography, infrastructure, and population) as well as asking market questions, such as, is this (or wil it likely be) a manufacturing site for competing products; is there a consumer base for the product in the foreign location; does the technical sophistication of the target location match the product; are there foreign regulations with regard to the product; and what is the IP enforcement track record for the foreign location?
In my experience, and in my opinion, the fact that the effectiveness of foreign patent litigation depends on the national laws involved makes it imperative that U.S. practitioners obtain the assistance of knowledgeable and experienced foreign counsel. However, because in many cases the dispute arises from within contractual arrangements made abroad (foreign manufacturing counterparts, employees, contractors), litigation can be effectively bypassed or moderated through such things as arbitration clauses, with favorable forum and law selection, in licenses and agreements. While this will not help in the case of independent third party knock offs, it will, especially for the more technologically advanced products, allow enforcement of “know how” flow.
To further address you question, in June 2003 James Forstner included an interesting country rankings table at a seminar given at George Mason University Law School. In the table he ranked several countries according to their relative value as a location for obtaining a patent. The following is a reproduction of his table:
Category of country Countries
“A” Countries
Patents have high practical value
Australia
Canada
The Netherlands
United Kingdom
United States
“B” Countries
Patents have medium practical value
Belgium
Finland
France
Germany
Ireland
Israel
Italy (also San Marino)
Korea
New Zealand
Singapore
Sweden
“C” Countries
Patents have low practical value
Argentina
Austria
Brazila
Chile
Chinaa
Czech Republic
Denmark
Greece
Hong Konga
Hungary
India
Japana
Luxembourg
Malaysiaa (also Sabah
and Sarawak)
Mexico
Norway
Pakistan
Paraguay
Philippines
Poland
Portugal
Russiaa
Slovakia
South Africa
Spain
Switzerland (also
Lichtenstein)
Taiwana
Thailand
Turkey
Ukraine
In addition, a GAO survey (International Trade, Experts Advice For Small Businessess Seeking Foreign Patents, GAO-03-910, June 2003) was recently conducted in which patent attorneys were asked to rank the top twenty things that small business should consider when thinking about foreign patents.
The winners were:
1. Avoid divulging information about the invention prior to
filing a U.S. application.
2. Be familiar with key dates and deadlines that are
specified under U.S., foreign, and international law,
and take foreign filing actions accordingly.
3. Consider the company’s long-range business plan.
4. Manage patent portfolio as an asset and regularly
review foreign portfolio.
5. Consider the nature and patentabilty of the product.
6. Only file in countries where protection will be
meaningful and patent will produce a return on
investment.
7. Begin to consider foreign patent options early, such as
in the research and development phase, and seek
legal advice at that time.
8. Obtain experienced U.S. patent counsel that is familiar
with obtaining foreign patents.
9. Consider filing under international and regional treaties
(Patent Cooperation Treaty, European Patent Office,
etc.).
10. Do a thorough market analysis (i.e., company’s interest
in overseas markets, current and potential size of
foreign markets, nature of competition, etc.).
11. Become more knowledgeable about the total cost of
seeking, obtaining, maintaining, and enforcing foreign
patents.
12. Obtain experienced foreign patent representation
(attorney or agent).
13. Realistically consider company’s willingness and ability
to enforce patents abroad.
14. Involve top company officials in foreign patent
decisions.
15. Consider alternative ways of commercializing foreign
patent (i.e., licensing, joint ventures, partner with other
U.S. or foreign firms, etc.).
16. Consider strategic options in the development of
foreign patent applications (i.e., file shorter
applications, design applications to meet foreign
requirements, modify claims, consider utility patents
where available, etc.).
17. Become more knowledgeable about foreign patent
laws and practices and how they differ from U.S. patent
laws and practices.
18. Estimate cradle-to-grave foreign patent costs and do a
thorough cost/benefit analysis.
19. Seek training opportunities on foreign patent protection
for any in-house counsel and other staff.
20. Seek advice and partner with other businesses.
All the best, Tom
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Re: EU Community Patent Dead!?
Thu, March 25, 2004 - 8:25 AMHi Tom,
This is really helpful. I'm curious, however, that Japan is listed as a "c" level patent country. Also, does it look like India will reach the "B" tier after implementing its new WIPO-oriented patent laws in 2005?
Best,
John -
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Re: EU Community Patent Dead!?
Fri, March 26, 2004 - 6:35 AMJohn;
Good question about Japan’s “c” rating. With regard to the U.S., Japan has not had made any of the Special 301 lists since 1999. Although, there was an out of cycle review made in 2001, and Japan last made the Priority Watch List in 1996 when the USTR said:
"Japan: Despite conclusion of two patent-related agreements in 1994, patent-related problems continue, particularly with respect to the uneven and overly narrow interpretation of patent claims in Japanese courts and concerns among American industry about patent "flooding" practices in Japan. These practices have limited the ability of U.S. patent holders in a range of industries to acquire exclusive rights comparable to those available to Japanese patent holders in the United States. Concerns also remain about the inadequate protection of trademarks and trade secrets, as well as end-user software piracy. The United States continues to pursue a WTO dispute settlement proceeding regarding Japan's failure to provide an adequate term of protection for pre-existing sound recordings."
The "c" rating may therefore reflect the generally poor rating the Japanese patent system was accorded prior to 1996. A paper (U.S. Trade Policy and the Japanese Patent System) by Robert Girouard presented at The Berkeley Roundtable on the International Economy is good at fleshing out the issues that the pre-1996 Japanese system presented. In addition, it may be that an analysis of the Japanese market results in the decision not to obtain patent rights in Japan. They may be manufacturing/exporting far in excess of their use. For example, we have several Japanese clients (involved in the computer arts) who obtain Japanese rights but are critically interested in obtaining foreign rights in the U.S. and Europe.
In my experience, the larger clients have shown an increasing interest in India. This likely reflects the increase of resource investment in India. Prosecution of patents in India has shown a concurrent change as well. More and more it looks like the Indians take a “wait and see” approach to related prosecution in the U.S. and Europe. This result in an Indian patent with U.S. looking patent scope in some cases. Although it may require two or three patents to gets the overall U.S. scope due to the dissection of patentable subject matter in India. As for enforcement, this is likely to be an area that will be thick with WTO disputes. I note that currently India is a respondent in a few disputes related to patents.
The USTR, for 2003, stated that “Indian intellectual property protection continues to be weak. There are some tenuous first signs that the situation may be changing, as witnessed by the passage of long-awaited patent law amendments in May 2002. However, this law still appears to contain several TRIPS inconsistencies. In addition, piracy of copyrighted works remains a problem, particularly popular fiction works and certain textbooks, and protection of foreign trademarks remains difficult. India should adopt immediately amendments to its copyright law fully and correctly implementing the WIPO Internet Treaties and correcting TRIPS deficiencies in its protection of computer software. Counterfeiting is rife in the Indian marketplace, for example in the auto, pharmaceutical, consumer goods and apparel industries. Particularly troubling are extensive public health and safety risks posed by counterfeit medicines and auto parts. To make matters worse, a major problem is India's export of counterfeit goods to the Middle East, southern Africa and Europe. While the United States is encouraged by the Indian Government's recent statements, especially concerning the implementation of data exclusivity regulations, action has yet to be been taken. We urge the Indian Government to issue data protection regulations that reflect the internationally recognized standard of protection for undisclosed test data and to ratify and implement the two WIPO Internet Treaties.”
Anyway… things to ponder.
All the best!
Tom
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Re: EU Community Patent Dead!?
Sat, March 27, 2004 - 3:00 PMI have to agree with the above appraisal of foreign corporations and entities attempting to acquire patent rights in Japan. Every time one of my clients goes national phase in the JPO, it gets screwed. In some cases, it's the result of less than perfect translations of the text into Japanese, which can make for some amusing and simultaneously frustrating translations of JPO Office Actions back into English. In many cases however, the JPO gives some pretty weak arguments over lame prior art and then stand firmly by them, even as they are overcome in the EPO. -
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Re: EU Community Patent Dead!?
Thu, April 1, 2004 - 8:19 AMA good international IP overview presentation can be found at:
www.itaa.org/isec/events...ions/888.ppt
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Re: EU Community Patent Dead!?
Thu, September 9, 2004 - 4:45 AMThese Lists are interesting, but of limited value. Almost everyone you ask will have a different view.
I'm a British and European Patent & Trademark Attorney with practical experience of litigation situations in Europe. I was also previously a Partner of Patent firms in HongKong, Singapore and China (PRC).
I can tell you that in Europe, Germany would certainly be placed in the top tier. From a Patentee's point of view, it may be the country of choice in which to litigate, because validity cannot be considered in the Infringement Court, costs are low and judgement swift. Some would put the UK in the second tier because - as in the US - Infringement and Validity are considered together and the British Patent Judges in the High Court are tough on invalidating Patents for obviousness [The alternative Patent County Court, where Chartered Patent Attorneys such as myself have right of audience is generally considered more Patentee-friendly and is generally less expensive in a case carried through to trial].
The Courts in both HongKong and Singapore are Patent friendly and operate on the British model. Interim injunctions are readily obtainable on an ex parte basis to stop copying quickly, and in HongKong can be used to catch product passing through HongKong from China.
Finally, the EU Community Patent may be dead for the moment, but the issue will come back to the negotiating table again. Too many people want to have a single Community Patent rather than the present bundle of National Rights, which is what the present so-called European Patent produces, for it to remain dead. -
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Re: EU Community Patent Dead!?
Fri, September 10, 2004 - 6:35 AMMichael,
Just when you think a thread is dead...it pops back to life. Thank you for your comments.
Originally I had included the list as an item of interest. It appears that assigning rankings to countries has stirred some interest. You are 100% dead on when you state that "everyone you ask will have a different view" I should have added at the time I posted the list that the categories contained in the list were developed from the perspective of a U.S. company. A number of factors were considered in determining the relative practical value, such as the competency of the national patent office, the ability to obtain patent claims of reasonable scope at a reasonable cost in a reasonable time, the enforceability of the patent in a particular country (including the sophistication and independence of the court systems, the ability to obtain injunctions and significant damages, the resolution of court proceedings within a reasonable time, the question of whether the courts are biased against foreign plaintiffs, the competency of the local bar), the deterrence value of patents against potential infringers, the ability to generate significant license royalty income, the level of industrialization in a country, and the consumer population of a country. Of course these factors were weighted according to the original author's personal experience in arriving at his “A”, “B”, “C” designations.
As a British and European Patent & Trademark Attorney, it would be interesting to hear your views on how foreign patent applicants should best utilize the European system. What are the most common “blunders” made by foreign applicants? What steps would you recommend for commercializing a product or service (subject to a patent or patent application) in the EU?
All the best, Tom -
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Re: EU Community Patent Dead!?
Mon, September 13, 2004 - 4:40 AMI've only just joined this tribe, and so have only now found this thread.
How best to Use the EP system?
The answer will differ from one business to another. For a business supplying a product that it would not be practicable to manufacture locally for just one European State, an EP case for which Designation fees are paid just for (say) DE, FR and GB is probably sufficient.
For another business making a mass produced product that could easily be produced just for one state, more Designations may be sensible. However, if you have a choice of litigation venue, still litigate in GB, DE or NL.
Also consider obtaining a Registered Community Design (RCD). They are very cheap! Pan-European Injunctions can be obtained. Also remember the free 3-year Unregistered Design Right useful to restrain blatant copying in the earlier years before an EP is granted.
For a product that needs to be policed early on it may be wise to go for a German Gebrauchsmuster and a GB National Patent. Both can be granted very quickly (in the GB case with full Examination). FR National Patents are also granted quickly, but there is no real Examination.
In Civil Law countries, most notably Italy, the Court approved dawn raid of an Infringer's premises on an Order obtained quickly on an ex parte basis to take possession of infringing stock and paperwork is a powerful weapon that often brings the infringer to its knees.
The most common blunders:
In short, assuming that the law and practice is the same as, or at least similar to the US. So: take local advice early.
Don't publish before obtianing a priority date. Europe is first to file not first to invent.
Let the local Attorney revise the US Claims into European format at an early stage (on entry to the EP Phase for a PCT case). This will save significant money and advance prosecution of the case.
Don't waste money paying Designation Fees (and later, National Phase costs, including translations) for countries in which you are never going to sell or litigate.
File RCDs where you can.
Take early action to protect Trademarks with broad Lists of Goods and Services. Where possible go for Word marks. If the Word mark is descriptive, OHIM will usually still allow Registration of a logo form of the mark. All rights in Europe generally go to the first to apply. Much broader coverage is obtainable than the USPTO would allow, and you don't need to prove any use in the Application process, or later - unless challenged by a non-use cancellation action from a third-party, or if you need to rely on the Registration in an Opposition.
Pay for a Trademark Watching Service. At OHIM, Applications are not rejected on the basis of earlier marks unless the owner of the earlier right files an Opposition. Also don't be frightened of Oppositions. They are nothing like as expensive as US Oppositions, and almost all are resolved between the parties at an early stage by negotiation.
Commercialisation:
This is too big a question to answer in the round. The advice will be different for each individual circumstance. However, the European Union is an open market, so if there is a need or a potential market for the product, come and sell! But don't try to divide the market. Consider setting up in an Enterprise Zone, where premises and local taxes may be reduced or grants may be obtainable. Some US firms are more comfortable working in English, which may explain why the UK has the largest inward investment in the EU. It also has less restrictive labour laws than (say) France or Germany.
An area that might prove particularly attractive for US importers to set up distribution or assembly is the Thanet Development Zone (the only one in South-East England), which is immediately next to the Channel Tunnel, Dover and Ramsgate Docks and includes Kent International Airport.
Also US businesses could look to the East, the new economies of Poland, Hungary and the Czech Republic that have just joined the EU, and have low wages, and large young and quite well educated workforces, and a lot of Eu money will be available for businesses setting up there.
Regards
Michael Deans
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