IPR GROUP Observation of IP Practice

Defensive Publication – an Indispensable Tool for IP-Managers

[PATENTBÜRO PAUL ROSENICH AG]

taken by surprise through late should revert to the European

comers in the same field. Convention, namely to Articles related to and Defensive Publication, invention step. [ 42 ], [ 43 ] as a special form of protection Article 54 against others rights in Novelty . With (1) An invention shall Mr. Paul Rosenich, European Patent Attorney, Patent respect to the subject of be considered to be new if it and Trademark Attorney (WIPO, publication, it is should be does not form part of the state CH, LI), IP-Mediator (WIPO, CH) CEO noted that any information can of the art. be published unless it is (2) The state of the art Introduction prohibited by the legislation shall be held to comprise IP-Managers do often (e.g. developments in weapons everything made available to consider if IP-protection is the or the like). the public by means of a only "true way" of satisfying Defensive application written or oral description, by the needs of their companies. It is used to defeat the novelty or use, or in any other way, is correct, that IP-protection inventive step of a subsequent before the date of filing of the for , Designs and patent or model or European . Trademarks are useful to design application. In other (3) Additionally, the improve the position of words the competitors will content of European patent companies in the market. have no possibility to obtain an applications as filed, the dates However, those IP-rights IP right for the subject matter of filing of which are prior to provide only a right to stop for which the defensive the date referred to others doing businesses in the publication was made since all in paragraph 2 and which protected areas. These rights - data mentioned in the were published on or after that at least from their filing days publication become state-of- date, shall be considered as do not protect the companies the-art by publication. State- comprised in the state of the from being attacked by foreign of-the-art however can be used art. [ 46 ] IP-rights. That means that IP- in attacking IP-applications of Article 56 rights can only be used for a Competitors who filed them Inventive step defense against competitors in after the publication was made. An invention shall be a limited manner. Here considered as involving an Defensive Publications fill an Relevant points of Law inventive step if, having regard important gap and at the same (EPC as example) to the state of the art, it is not time ensure that To understand the obvious to a person skilled in inventors/creators will not be grounds of possibility to use the art. If the state of the art the defensive publication we also includes documents within

Digest # 06, 2015 iprgroup.info

IPR GROUP Observation of IP Practice the meaning of Article 54, carries uncertainty factors Further, one of the paragraph 3, these documents including the profitability of important things about shall not be considered in the invention. defensive publications is the deciding whether there has The IPR’s (IP-rights) route to publication which been an inventive step. will be relevant only in the should be defensive in the case of costs incurred to the meaning that it should legally Therefore, earlier invention are bigger than costs qualify as a publication but it defensive publication of incurred to the imitations and should not be a mass- inventors/creators might stop replication of said invention. In publication in order to not later filed patents, utility this regard the following is inform too many people at the models or designs of equitable: same time. competitors, without harm to - if costs for copying of a Most of all existing inventors/creators earlier new solution are publication platforms provide filings of IP-applications. smaller than R&D of the security of the particular the same solution, then database or library which It is worth noting, that the party bearing the record the publication data and the secret application process R&D-costs has a document it. of a patent e.g. usually takes problem in view of With respect to this, a several months at least and return of investment European platform with the without acceleration it lasts for (no ROI); brand protegas® provides an 18 months after filing or - if costs for R&D of a additional certificate of priority. Taking into account new solution are publication and also issues a the fact that inventions are significant and another distinct publication number made more and more in party gets patent (like at an patent office) and a parallel and considering costs protection, then the signed certificate (like a involved for patent party bearing the R&D certified priority document of a examination and R&D, costs has a problem patent office). defensive publications (lost R&D costs); becomes more and more - if costs for R&D of a To sum up, modern attractive. Those who are new solutions are world demands modern earlier in filing of IP- significant and other solutions in IP management applications and/or publishing party can copy freely, and defensive publication get a clear advantage over the then the party bearing helps to meet the requirements competitors who are a bit later the R&D-costs has a of innovative business process with their respective actions. problem (R&D costs in and to make business at a more price calculation) reliable base. Defensive Relevant points of Publications are modern and Business interest It should be kept in useful insurance tools for IP Modern business mind that normally similar inventors/creators. definitely relies on the R&D solutions appear at about the which is a part of successful same time, however better development. However, R&D solutions belongs to those is also a risky financing area patent filers who work longer since the development of on the R&D. inventions and their realization

Digest # 06, 2015 iprgroup.info IPR GROUP Observation of IP Practice

Mr. Paul Rosenich, European Patent Attorney, Patent and Trademark Attorney (WIPO, CH, LI), IP-Mediator (WIPO, CH) CEO

Mr. Paul Rosenich is a European attorney who has been in the position of the chairman of the Disciplinary Committee of the European Patent Institute (epi) which is the Chamber for European Patent Attorneys for more than ten years. He is President of the Board of the international IP law firm “Patent Bureau Paul Rosenich

AG”.

On March 23, 2015 the International Institute of IP Management I3PM held the conference

“IP MANAGEMENT CHALLENGES IN OPEN INNOVATION ENVIRONMENTS” where Mr. Rosenich presented practical explanations about the useful IP-management tool “Defensive Publication”. Electrical engineering graduate, holds a diploma in optics and optoelectronics and obtained a master's

degree in IP management and law.

Has been working in the field of industrial property protection for more than 35 years: • Patent and trademark departments of different industrial firms (electrical devices, tires and

technical rubber products, ski bindings) • Freelance patent researcher in Austria and Germany

• From 1987 to 1997 authorized officer at the patent office Büchel und Partner AG as well as Technolizenz AG • From 1987 Swiss Patent and Trademark Attorney • 1993 European qualifying examination

• 1995 admitted as Liechtenstein Patent and Trademark Attorney

• 1998 formation of Patentbureau Paul Rosenich AG (patent attorney's office) • Lectured in the area of intellectual property at technical colleges and universities in Switzerland,

Liechtenstein, as well as for epi, EPA and FORUM Institute for Management and for the TUeV-Akademie • Tutor for questions of law of the European Patent Convention at various universities including the

CEIPI of Strasbourg University and at DIPOLI at Aalto University Helsinki • From 2014 Foreign Guest Researcher at the Global Intellectual Property Business Magazine Guangzhou, China • Chairman of the Disciplinary Committee at the European Patent Institute (epi)

• President of the Admissions Commission of UNION-IP and Delegate for Liechtenstein at the Executive Committee of UNION-IP

Digest # 06, 2015 iprgroup.info

IPR GROUP Observation of IP Practice

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Contact

PATENTBÜRO PAUL ROSENICH AG

Main office: BGZ Rotenbodenstrasse 12 9497 Triesenberg Liechtenstein Tel: +423 265 33 00 Fax: +423 265 33 01

Branch office:

Digest # 06, 2015 iprgroup.info IPR GROUP Observation of IP Practice Schulhausstrasse 19 9470 Buchs/SG Schweiz

Tel: +41 81756 54 63 Fax: +423 265 33 01

Email: [email protected] http://www.rosenich.com/

Digest # 06, 2015 iprgroup.info