In association with The business magazine about maximising IP value One of the advantages of IAM is that it is high quality and yet still accessible and relevant to the “non-specialist chief executives and senior managers who don’t know what they don’t know about IP. It’s an important contribution to the upward IP education of senior managers. Ian Harvey The growing threat of IP mismanagement lawsuits in the US Chairman, The keys to better benchmarking of patent quality How SFAS 141 has changed the M&A rules for intangibles Inside the survey that reveals non-core licensing myths Intellectual Property Institute Why better valuation leads to more royalty rate deals & UK government adviser” on IP The goodfellas Detkin and Mhyrvold on patents, trolls and Intellectual Ventures The patent pendency crisis and the way to respond • How to make open source pay IAM is an excellent Why Europe needs a new IP intermediary market • Putting a price on the value of customers publication for helping with the management of an intellectual Intellectual property and other types Subscribers to IAM include: “property portfolio. There is always of intellectual asset are now of major 3M; Air Liquide; AT&T; Avaya; BHP one article in each issue, and importance to companies. Intellectual Billiton; Bird & Bird; Boeing; Brown Asset Management (IAM) is the first University Research Foundation; BTG often more, which is relevant to magazine specifically designed as a International; California Institute of our current business situation. single source of IP information for senior Technology; Cargill; Chevron; Cleary decision makers in companies, as well as Gottlieb Steen & Hamilton; Clifford Paul Johnston for investors and analysts. Chance; Covington & Burling; Danfoss; Group Trade Mark Counsel Dolby Laboratories; Dow Chemical; A combination of news, case studies, ICI Group Intellectual Property Ericsson; Fujitsu Siemens Computers; GE; interviews, profiles, feature articles and ” GlaxoSmithKline; Halliburton; Herbert data, IAM ensures that its readers are Smith; Howrey; Johnson Matthey; Jones always at the cutting edge of the latest Day; Lockheed Martin; Lucent thinking and therefore best placed to As intellectual property Technologies; Marsh; Merchant & Gould; make the right decisions about IP. achieves greater and greater Motorola; Nortel Networks; Novozymes; recognition as a key strategic asset IAM is designed for: Oracle; QinetiQ; Roche; Smart & Biggar. “of our business, IAM is unique in • General counsel, IP counsel, patent counsel, trademark counsel For subscription details or to request a giving me a really up-to-date • CFOs, CTOs, CIOs, CEOs free trial, visit the IAM website or call us overview of developments and (or equivalent positions) at on +44 20 7234 0606 or email us at thinking in this area. IP-owning companies [email protected] Paula Nelson • Lawyers in private practice General Counsel (Intellectual Property), • Fund managers, brokers, analysts, Vice-President, heads of research at investment banks, Nestlé S.A. ” venture capitalists www.iam-magazine.com Contents Chapters Facing up to Europe’s patent challenges 5 By Joff Wild, Editor, IAM magazine Quality at the European Patent Office 10 By Professor Alain Pompidou, President, European Patent Office The reform of the European Patent Convention: 14 grant and opposition proceedings By Pascal Moutard, Brevalex The Boards of Appeal at the EPO 18 By Pascal Moutard, Brevalex Filing divisional applications in Europe: a dangerous hobby? 22 By Hans Hutter, Nederlandsch Octrooibureau A tale of spiders and torpedoes 27 By Christophe Ronse, ALTIUS Law Firm Strategic issues concerning patent litigation in Europe 30 By Tom Carver and Nigel Stoate, Taylor Wessing Patent enforcement in Norway 34 By Jens Fredrik C Langfeldt, Zacco Norway AS Enforcing patents in Austria 39 By Alexander Cizek, DLA Piper Weiss-Tessbach Enforcing patents in Belgium 43 By Christophe Ronse and Paul Maeyaert, ALTIUS Law Firm Enforcing patents in the Czech Republic 48 By Lukas Lorenc, Cermák Horejs Myslil a spol Enforcing patents in Denmark 51 By Pernille Thorsboe, Zacco A/S Enforcing patents in Finland 55 By Ben Rapinoja and Aura Soininen, Borenius & Kemppinen Ltd Enforcing patents in France 59 By Pascal Moutard, Brevalex Enforcing patents in Germany 63 By Bernd Allekotte, Grünecker Kinkeldey Stockmair & Schwanhäusser Enforcing patents in Hungary 67 By Dr Gábor Faludi and Dr Gusztáv Bacher, Szecskay Ügyvédi Iroda – Attorneys at Law Enforcing patents in Iceland 72 By Gunnar Örn Harðarson and Ásdís Magnúsdóttir, Árnason Faktor Enforcing patents in Ireland 76 By John Whelan and Ciara Cullen, A&L Goodbody www.iam-magazine.com Patents in Europe 2006 1 Contents Chapters Continued Enforcing patents in Italy 80 By Giovanni Antonio Grippiotti, Società Italiana Brevetti Enforcing patents in the Netherlands 83 By Hans Bottema, Nederlandsch Octrooibureau Enforcing patents in Poland 86 By Katarzyna Karcz and Malgorzata Zielinska-Lazarowicz, Patpol Enforcing patents in the Slovak Republic 91 By Andrea Povazanova, Cermák Horejs Myslil a spol Enforcing patents in Spain 94 By Miguel Vidal-Quadras and Oriol Ramon Sauri, Amat i Vidal-Quadras Advocats Enforcing patents in Sweden 98 By Helena Östblom, Zacco Sweden Enforcing patents in Switzerland 101 By Michael Stierwald, Braunpat Braun Eder AG Enforcing patents in the UK 104 By Gary Moss, Taylor Wessing Directory 110 2 Patents in Europe 2006 www.iam-magazine.com Editorial board Bruce Berman Welcome President, Brody Berman Associates, New York Mike Carr Director of Enterprise Venturing, BT Exact, UK Michael Cleare Welcome Executive Director, Columbia University Enterprises Bruce Lehman Chairman of the International Intellectual Property Institute, Washington DC Douglas R Elliott Founder and CEO, TEQ Development LLC, Chicago Morag Macdonald Head of the International IP Group, Bird & Bird, London Marshall Phelps Corporate Vice President for Intellectual Property, Microsoft Corp. Herbert C. Wamsley Executive Director, Intellectual Property Owners Association, Washington DC Rob Willows Vice President, Thomson Derwent Industrial Property Markets Division Editor Joff Wild [email protected] Finance Editor Nigel Page [email protected] Deputy Editor (North America) It is a pleasure to welcome readers to the essentially national patents, when it comes Victoria Slind-Flor [email protected] second edition of Patents in Europe: Helping to enforcement, patent owners have to take a Contributing editors business compete in the global economy. country-by-country approach. Something that Richard Marsland [email protected] There are very few patent owners who can take time, cost a lot of money and Adrian Preston can afford to ignore the importance of provide contradictory results. Efforts to [email protected] Europe to their businesses. As home to a change this situation are ongoing but, at Reporter population of over 500 million, as well as present, show little sign of nearing resolution. Liz Rutherford-Johnson [email protected] innumerable world-class technology-based It is with all this in mind that IAM has Sub-editor companies, the continent is not only a produced Patents in Europe 2006. This Carolyn Boyle potentially very lucrative market for those special supplement to the magazine has been [email protected] Design and production from elsewhere in the world, it is also where designed to provide concise information about Russell Anderson many of their competitors are to be found. a host of key issues facing those looking to [email protected] For those actually based there, Europe’s obtain patent protection in Europe and then, if Subscriptions and marketing manager markets are the lifeblood that keeps them necessary, to enforce it. At the front end of Alan Mowat going. As a consequence, understanding the the publication we have a number of [email protected] intricacies of how the patent system operates introductory chapters that look in some detail Circulation manager Amanda Green is essential: get it wrong and valuable at specific aspects of the European patenting Publisher resources invested in research and process. These are then followed by a series Dan Rabey development will end up having been wasted. of country-based contributions in which [email protected] Publishing director But the problem with Europe is that it is correspondents answer questions relating to Tony Harriss made up of a collection of sovereign states – the way in which patents are enforced in their [email protected] each one with its own patenting rules and jurisdictions. In this way, the aim is to build a Globe White Page Ltd New Hibernia House ways of deciding disputes. For companies tool that will be of practical use to European Winchester Walk wishing to understand the complicated patent patent owners, as well as those from other London SE1 9AG United Kingdom infrastructure on the continent, this is the first parts of the world. Tel +44 20 7234 0606 lesson: Europe is not one, it is many. To ensure the highest quality, we Fax +44 20 7234 0808 There is a way, however, in which the approached only those firms with Email [email protected] Web www.iam-magazine.com patenting process can be simplified and that acknowledged expertise in European patent IAM is published bi-monthly by is to use the European Patent Office (EPO) as law and practice to submit editorial. We are Globe White Page Ltd the starting point for a protection strategy grateful to all contributors for taking the time ISSN 1741-1424 that covers the continent. Established by to do so. Above all, however, we are Individual subscription rate GB£365 signatories to the European Patent indebted to officials at the European Patent Printing and origination by Convention (EPC) in the 1970s, the EPO acts Office, who not only provided copy and Pyramid Press, Nottingham, UK as a one-stop location for securing granted statistics, but also gave much invaluable © Globe White Page Ltd patents in each of the current 31 member general help as Patents in Europe 2006 was Copyright applies.