Maintaining an expansive IP portfolio can be expensive. Translation costs are one of the main drivers, and there are various strategies for controlling them.

Software inventions that involve software are only patentable if they meet certain requisites, including showing inventive elements and showing how the technology accelerates or improves computer performance. We can assist you in developing an economical patent strategy to protect these innovations in Europe.

Cost-Effective Patent Portfolio

Shifting IP landscape

The traditional, confrontational approach to patent strategy may no longer exist, but its place has been taken by more nuanced approaches for companies leveraging intellectual property for competitive advantage. With IP rights increasingly used as passports to new market opportunities, strategic choices are emerging that provide faster and cheaper access to technologies powering these opportunities.

Patents remain a crucial source of innovation and growth in an expanding global economy, according to the EPO’s 2016 Annual Report, granted patents soared 40% higher than 2015 and set a record high number 96 000, the most ever seen at one time by their office.

Companies are discovering innovative methods of unlocking the financial potential of their IP assets, with stock analysts increasingly factoring intellectual property into valuation models as it becomes clearer that having a robust IP portfolio can serve as a powerful competitive differentiator and promote future growth.

Reforms at the EPO in recent years have greatly enhanced its efficiency when pursuing and defending patents. In 2016, for instance, they significantly decreased the number of search/examination/opposition cases remaining open by 25%, which allows faster completion of examination processes and more efficient prosecution strategies.

EPO Lens Database allows users to easily analyze and visualize data from its patent information system (PIS) more user-friendly way. Users only require basic SQL knowledge in order to extract individual patent records or integrated datasets.

Companies are finding innovative ways to share their IP and facilitate innovation. Tesla, for instance, opened up their electric car patents as a way of shaping and accelerating industry progress while driving down manufacturing costs and encouraging infrastructure investment – creating an effective network effect. Intel similarly provided access to IoT patents so developers could build products which access necessary data sources.

Faced with these trends, business leaders are reconsidering their IP strategies. The imminent launch of the Unitary Patent and Unified Patent Court offers them a prime opportunity to do just that. Now is an opportune moment for businesses to assess their positions and craft policies that adapt to a rapidly-changing environment.

How to file a patent at the EPO

Do a patentability search before filing the application. This will ensure that you are submitting a novel invention and it is not obvious based on existing prior art. Use the EPO patent databases or other resources to conduct this search.

1. Type of application

Choose the type of application you want to file: The EPO provides different types of applications.

a. European Patent Application (Direct Filing)

 Submit a single EPO application, which if granted results in a bundle national patents for the designated countries.

b. International (PCT application)

Submit an international application for a patent under the Patent Cooperation Treaty and select the EPO to be the designated or chosen office. This can allow you to delay the entry into the national phase and assess the market without incurring extra costs.

2. Prepare the patent

 Write a clear and detailed patent application that includes a description of your invention, drawings if necessary, claims (which are the most important part of the application because they define the scope of protection) and an abstract. The application must meet the EPO’s format and content requirements.

3. Choose the language

You can choose between English, French and German as the official languages. Choose one of these languages to submit your patent application.

4. Send the application.

 You can submit the patent application to the EPO online (EPO Online File) or via postal mail. Include all required documents and pay any fees.

5. Examining the application

 The EPO examines your application in detail to determine whether it meets patentability criteria, such as novelty and inventive step. They can also ask for clarifications or amendments during the process of examination.

6. Publication

If your application is accepted, it will be published 18 months after the date of filing or priority.

After publication there is a period of nine months during which third-parties can object to the grant of a patent. Patents will be granted if no oppositions have been filed.

7. Patent grant

If you successfully pass the examination, and if there are no objections, the EPO will grant you a European patent. Validating the patent is required at this stage.

Remember that it can take many years to get a patent, from the time you file to the time the EPO grants the patent. To increase your chances of being successful, make sure to adhere to all EPO rules and regulations. It is highly recommended to seek the help of a patent lawyer or professional who specializes in European Patent Law.

Role of European companies in global patent strategies

As patent systems around the world continue to change and harmonize, it is increasingly important for businesses to build a robust patent portfolio to safeguard their business across multiple jurisdictions. As Europe’s premier patent office, the European Patent Office (EPO) offers unique tools that can strengthen global patent strategies – these include EPO boards of appeal and the new Unitary Patent Court (UPC).

The European Patent Office (EPO) reviews European patent applications, providing inventors, researchers and companies a centralised process that permits protection for up to 44 countries through one application. As part of its parent organisation – comprising 39 member states – the EPO’s activities and budget are overseen by an Administrative Council made up of representatives from each member state.

Once an application has been examined by the EPO, it will be made publicly available and published for public consumption. At this point, an applicant can choose to have his or her application evaluated by a panel of technical experts; their decision as to whether or not a patent should be granted is determined based on facts presented within their application as well as legal requirements under respective national patent laws.

Opposers of an examiner’s decision can appeal it by filing an opposition against it with the EPO’s board of appeals – independent bodies which review both its examination procedures and decisions – an effective opposition can be prepared with help from a patent attorney, and an appeal against a refusal decision can also be filed in each member state where patent protection was requested or validated.

Once an application is granted, its rights are converted into national rights in each of the participating countries via validation. Once this step has been completed, the UPC will have exclusive jurisdiction for litigation related to that patent in any EU member state which had ratified it at the time of request or validation – for traditional European patents prosecuted through EPO but validated in these states it can still opt-out during this transitional period.

By managing their patent portfolios strategically, European companies can protect their market position and innovate. The role of European companies is key to global patent strategies.

1. Innovation and Research.

European companies are innovators and leaders in many technological fields including automotive, pharmaceuticals and aerospace. They invest in research and develop new inventions that are eligible for patent protection.

2. Global Reach

Many European firms have an extensive international presence through subsidiaries, joint-ventures, or exports. Their patent strategies are often extended beyond Europe in order to ensure protection on key markets around the world.

3. Patents for defensive purposes

 European companies acquire patents to protect themselves and their products. A strong patent portfolio can help them avoid litigation and give them leverage during cross-licensing discussions.

4. Standard Essential Patents

 European companies are involved in the development and implementation of international standards. These include those that apply to telecommunications (5G, for example) and other sectors. If their technology is included in a standard they will license it under fair, reasonable and non-discriminatory terms (FRAND). It is important to manage SEP portfolios in order to ensure that patented technologies are widely adopted and receive appropriate compensation. Here are some key aspects and discussions related to Standard Essential Patents:

FRAND License Obligations

When their technology is adopted as a standard, SEP holders are often required to license their patented technologies on Fair, Reasonable and Non-Discriminatory terms. This commitment ensures the patent holder can’t abuse their dominant position to demand excessive royalties or discriminate against certain licensees.

Disputes & Litigation

 Despite FRAND commitments there are often disputes between SEP holders, and potential licensees, over licensing terms and rates, such as the right royalty rate. These disputes may lead to litigation. Some SEP holders are accused of “patent hold up” and demanding higher royalties, or refusing licenses.

SEP Value

 Calculating the appropriate royalty rate can be difficult, since it involves evaluating the value of the patent technology in the standard. Calculating SEP value involves a variety of methods, such as comparing licenses or assessing the contribution made by the technology to standard performance.

Global Impact

 SEPs have a global reach, since industry standards are used and adopted worldwide. This global reach can create complex legal and regulation challenges, particularly when it comes to enforcing the FRAND commitments across multiple jurisdictions.

5. Licensing & Revenue Generation

European firms often license their patents, creating revenue streams and encouraging technology transfer. Patent licensing agreements are a vital part of global business strategies.

6. Global Collaborations and Partnerships.

Many European companies collaborate with global entities such as universities, research institutions, and multinational corporations. The ownership and licensing of patents that result from these collaborations must be carefully considered.

7. Patent Litigation & Enforcement

 In the event of infringement, European firms may resort to litigation across multiple jurisdictions in order to protect their rights. In order to implement this aspect of their global strategy, they must navigate the legal systems and enforcement methods of various countries.

8. Navigating Diverse Patent Systems

 Europe is not one unified jurisdiction. European companies pursue patents via various regional and country systems, such as the European Patent Office and individual country offices. They may also apply for patents elsewhere, in the United States, China or Japan, to get a comprehensive global protection.

Navigating Diverse Patent Systems

Build IP portfolio cost effectively

Companies face increasing costs associated with maintaining global patent portfolios. A hybrid filing strategy may help companies cut costs while keeping their IP portfolios current; such a strategy involves working with a strategic partner who prepares an application’s skeleton while an attorney or law firm handles prosecution and filing of applications.

The European Patent Office (EPO) is a centralized patent system providing high-quality patent protection to 44 countries with a combined population of 700 million people, and ranks among the world’s top five patent filing offices. American applicants accounted for 26 percent of EPO applicant base in 2014.

Entities seeking to develop an effective EPO patent portfolio must understand the key differences between U.S. and European patent systems, including their laws and examination standards, which could have significant ramifications on patentability of inventions; an inventor may not be eligible to claim protection in both Europe and America for his/her invention.

To facilitate an efficient filing process, the EPO has implemented several initiatives to increase organizational sustainability. These include creating an engaged staff, digital transformation and strengthening international cooperation; also employing AI for patent classification and searches in order to help examiners identify relevant prior art more quickly; similarly the USPTO is taking similar steps by increasing workload through hiring hundreds of additional examiners in order to reduce application backlogs.

The EPO has adopted a two-hurdle test to ascertain whether an invention can be protected under patent. The first hurdle entails assessing whether the invention has technical character, which can be determined by reviewing whether its subject matter relates to an apparatus/device/system, computer program, computer-readable storage medium/data carrier etc.; secondly it involves considering whether an inventive step has occurred by considering whether combining and applying known elements from prior art forms part of its invention process.

An inventive step is necessary if the combination of these elements creates something new, useful and nonobvious when compared with prior art. This assessment is done through problem and solution approaches; more specifically it’s crucial that one recognizes their target persona when considering how he or she would perceive this invention relative to prior art.

G 01/19, issued by the EPO recently, addresses patentability of computer-implemented simulations (CIIs). While confirming existing case law on CIIs, it did not address how such simulations may have technical effects – making careful drafting of patent applications for such inventions absolutely essential.