Abstract
This chapter deals with active and passive patent strategies. Several aspects will be highlighted from patent filing strategies towards litigation strategies both from an active viewpoint as claimant and a passive viewpoint as a respondent. Active and passive will be interpreted with respect to an intellectual pro perty rights (IPR) portfolio and it will be interpreted in light of actions performed with respect to an IPR portfolio. Both views have an influence on each other. Even though these perspectives are at first hand seen as independent, typically a claimant will also become a respondent. Also the portfolio situations may change and so—up to a certain point in time—an IPR portfolio may still be shaped to same extent.
Pre-Remark In the following it is assumed that a product is based on certain technologies while a competing product may be directed to a like product and may be based on same technologies and/or other technologies. Also, we will refer to IPR portfolios, which encompass any kind of intellectual property right such as patents, utility models, supplementary protection certificates, trademarks, designs. Nevertheless this article will focus only on patents and utility models.
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Notes
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Under this doctrine, named after decision "In re Hilmer 359 F.2d 859 (CCPA 1966)" it makes sense to submit a first filing before the USPTO to ensure that the application becomes prior art at the priority date (and thus prevent third parties who file a patent application for the same subject matter in the meantime in the US from obtaining a patent therefore), at least in case the text of the patent application is not in English.
- 2.
See “The Munich Talks: A Global Call for Harmonization”, Under Secretary of Commerce for IP & Director for the USPTO David Kappos, http://www.uspto.gov/news/speeches/2011/kappos_munich.jsp
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Federal Court of Justice “Bodenwaschanlage” X ZR 13/99, BGHZ 143, 268 - Karate, BGH, Urt. v. 24.09.1979 - KZR 14/78, GRUR 1980, 38, 39 - Fullplastverfahren.
- 7.
A transitional rule was part of accession act with respect to Czech Republic, Bulgaria, Estonia, Lithuania, Latvia, Slovenia, Hungary, Poland and Slovakia in 2004 respectively 2007, however no such rule was included for Cyprus and Malta.
- 8.
For a Map, see http://documents.epo.org/projects/babylon/eponet.nsf/0/E65E85FAF2F200F4C125744A00294866/$File/epo_member_states_10_10.gif.
- 9.
For actual data, please consult http://www.epo.org/law-practice/legal-texts/london-agreement.html.
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- 11.
Data shown in the context of a European Patent Litigation Insurance show said trend, see Figure 1 on page 110 of http://ec.europa.eu/internal_market/indprop/docs/patent/studies/pli_appendices_en.pdf
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Düsseldorf, München, Mannheim, Berlin, Braunschweig, Erfurt, Frankfurt, Hamburg, Leipzig, Nürnberg, Magdeburg und Saarbrücken
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C-616/10, Solvay vs Honeywell, referral of a question by the ditict court of The Hague, http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:C:2011:089:0009:0009:DE:PDF
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Schmelcher, T. (2012). Active and Passive Patent Strategies. In: Biopatent Law: Patent Strategies and Patent Management. SpringerBriefs in Biotech Patents. Springer, Berlin, Heidelberg. https://doi.org/10.1007/978-3-642-24846-7_2
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DOI: https://doi.org/10.1007/978-3-642-24846-7_2
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