Cantor Colburn LLP

Global IP Strategies

Cantor Colburn LLP

William J. Cass, Partner• Co-Chair Additive Practice

• Co-Chair Litigation Department

• Mechanical Engineer

• Commercial Multi-engine Instrument Pilot

• Cantor Colburn LLP is a full service IP law firm

– Established Additive Manufacturing Group

• Ranked #10 Nationally in 2014 for Issued Patents

• International Network of Foreign Associates

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World Intellectual Property

Association

188 Patent Cooperation Treaty (PCT) States

3

http://www.wipo.int

US and China Drive International Patent

Filing Growth in Record-Setting Year

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• The United States of America and China drove record-level patent-filing activity via WIPO in 2013 as the number of annual international patent applications surpassed the 200,000 mark for the first time. International trademark and industrial design filings also achieved new record-breaking levels.

• The total number of filings under WIPO’s Patent and Cooperation Treaty (PCT) applications filed in 2013 amounted to 205,300, representing 5.1% growth compared with 2012.2 The United States of America (US) saw double digit growth in PCT filings and together with China accounted for 56% and 29% of the total PCT growth, respectively.

• With 57,239 applications in 2013, the US exceeded in 2013 its previous filing peak of 54,046 applications reached prior to the global financial crisis in 2007. China surpassed Germany to become the third largest user of the PCT system, with Japan as the second-highest user. The US remains the most-active user of the system

• Geneva, March 13, 2014 PR/2014/755

http://www.wipo.int/pressroom/en/articles/2014/article_0002.html

3D Printing

Unique Challenges!

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Copyright Functional? –

(Maybe A Utility Patent)

Do You Have The Right to Use,

Make and Sell?

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Forms of Protection

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CopyrightMode Of Expression

• Expression of work fixed in tangible form

• Excludes others from copying or using form of expression

Design Patent and Trade Dress

Design Patents

• Protect the Ornamental Features of a Design (but not the functional features)

– Automotive Manufacturers

• Bumpers, grills, seats, lights, steering wheels, etc.

• Consumer products

• Trade Dress

– Exclusive use – develop trade dress rights

Is it Functional?

Trademark

UTILITY PATENTS

Patents – The Right To Exclude

• Protect functional aspects of an invention

• Invention must be useful, new, and not obvious

• Typically Years to Obtain

• Expensive – especially to enforce

Patent vs. Trade Secret

Reasons to Patent• Protection

– Can the invention be easily reversed engineered?

• Then a patent may be necessary

• Devices should be given consideration

• Asset development

– Increase the value of the business

• Attracting investment

• Marketing

• Discouraging the competition

• Defensive strategies

Reasons Not to Patent• Expensive to obtain

– Attorneys fees

– Maintenance fees

– Not always successful

• Publication

– Teaching the technology

• Difficulty in enforcement

– May not be able to establish a process and/or method infringes

– Cost

THE IP AGREEMENT

The IP AgreementAn Important Form of

Legal Protection

• Employment/Non-Competition

• Joint Development Agreement

• Non-Disclosure Agreement

• Ownership Agreement

• The License

The IP Agreement

• Scope – covers most situations

• Flexible - may be customized

• Expedient – patents take years!

• Additional protection -

–Warranties and Representations

–Risk Allocation

Global Strategies

Global Strategies

• PATENT COOPERATION TREATY

• EUROPEAN PATENT APPLICATION

• SELECTING CERTAIN COUNTRIES

– Reduce the number of necessary patents and fees

– Consider U.S., Germany, Japan and China, as an example

• Berne Convention on Copyrights

• The Hague System for the International Registration of Industrial Designs

U.S. Member of the Hague Union

• On February 13, 2015 the USPTO announced that the United States has deposited its instrument of ratification to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement) with the World Intellectual Property Organization.

• The treaty will go into effect for the United States on May 13, 2015.

http://www.uspto.gov/about-us/news-updates/united-states-deposits-instrument-ratification-geneva-act-hague-agreement

The Hague Systemfor Industrial Design Applications

• Currently, U.S. applicants must file individual industrial designs applications in each jurisdictions where rights are desired.

• Hague Agreement will allow U.S. applicants to file a single international design application either with WIPO in Geneva, Switzerland, or the USPTO to obtain protection in multiple economies.

• Register up to 100 designs in over 62 territories with the filing of one single international application

http://www.uspto.gov/about-us/news-updates/united-states-deposits-instrument-ratification-geneva-act-hague-agreement

Protection in Europe –but what is Europe?

There are 38 European Patent

Office countries

-plus 2 Extension countries

The European Patent Office

Countries are the 28 EU

countries plus:

Albania Switzerland Iceland Liechtenstein Monaco

Macedonia Norway Serbia San Marino Turkey

Protection in Europe –but what is Europe?

Population:

European Union countries:

ca. 504,000,000

(July 1, 2013 projection)

European Patent Office countries:

(considering only Turkey and Switzerland

as additional countries):

- Turkey – ca. 75,000,000 (2013 estimate)

- Switzerland – ca. 8,000,000 (2013 data)

→ ca. 587,000,000

… US population: ca. 317,000,000 (2013)

So what is Europe?

Europe is a huge potential market...

→ tip: Don't just file in a few European countries!

DE application: (at filing, off of PCT application)

Official fees at filing: Euro 430

Translation costs: 2,000 Euro

Total: 2,430 Euro

EP application: (at filing, off of PCT application)

Official fees: 2,400 Euro

Translation costs at filing: -

Total: 2,400 Euro

Assumptions: ISA = EPO; 15 claims; 35 pages; 10,000 words

Cover all of “Europe” at the outset

tip: Don't just file in a few European countries!

EP v national applications:

EP application more advantageous because:

- reduced costs per country at filing

- reduced attorney fees (1 attorney involved, 1 procedure

before 1 Patent Office)

- no translations needed during prosecution

- potential to obtain protection in 38 + 2 countries (several

years to think about where – at no additional cost!)

Unitary Patent: Entry into forceWhat needs to happen (by law)?

1) ratification of UPC agreement by 13 states,including DE, UK and FR

.… 6 states already ratified!

AT, BE, DK, FR, MT, and SE

….UK is assessing public feedback regarding ratification

….IE must hold referendum

.… what if GB leaves the EU???

Unitary Patent: Entry into force

What needs to happen (by law)?

2) amendment of EU regulation No 1215/2012 onjurisdiction and recognition + enforcement ofdecisions

… entered into force January 2015!

UP: Entry into forceWhat needs to happen (in practice)?

ES + IT had filed action against new system (now dismissed)

but:

ES filed new action against new system (language

discrimination)

→ action needs to be dealt with by EUCJ!

Advocate General Yves Bot rejected Spain’s arguments in aNovember 2014 opinion and recommended that the EUCJdismiss the action.

in addition...

UP: Entry into force

What needs to happen (in practice)?

• UPC + EPO: administrative functions

• UPC: rules of procedure (17th draft markup final one???)

• UPC: selection and training of judges

• UPC: creation of court facilities

• UPC: creation of IT system

• UPC: decision on fees (opt-in/out, court fees, etc.)

• EPO: decision on fees (post-grant renewal fees + unitary effect fees)

Asia and Pacific

• World Intellectual Property Organization

• Regional Bureau for Asia and the Pacific

The Regional Bureau for Asia and the Pacific is responsible for provision of legal and technical assistance to 38 countries, including 25 developing countries and 13 LDCs, in the Asia Pacific region. This assistance is provided in cooperation with relevant sectors in WIPO.

What’s New In The United States?

U.S. Patents in Additive Manufacturing

Additive Manufacturing Conference

United States Patent and Trademark Office January 23, 2013

U.S. Patents in Additive Manufacturing

• Patent Applications Filed

• Average 680/Year

• Over the Last 10 Years

• 200 Classifications

• New Art Unit Established at The United States Patent Office

• 3000 Issued PatentsAdditive Manufacturing Conference

United States Patent and Trademark Office January 23, 2013

Exciting Times!

Many Key Patents Have Expired!

Supply SpoolsBuild Filament

Support Filament

Heated Nozzles

Build Platform

Fused Deposition Modeling

US 5,121,329

Laser Scanner

Liquid Resin

Support

Recoater Blade

Platform

Stereolithography

Laser Sintering

US 4,938,816

Be Careful - Meaningful Patent Protection Still Exists

• Materials

–Object

–Support

–Special Properties

• Hardness, glass transition, fillers, porosity, etc.

• Treatments

–Vapor deposition

Be Careful - Meaningful Patent Protection Still Exists

• Build Chambers/Heating Cabinets• Material Handling

– Moving platforms, conveyors• Internet protocols

– Remote construction, user input and design choice

• Physical components– UV lights, lasers, liquefiers, dispensing

systems

The Key To Success

• Due Diligence

–Determining the right to use the Intellectual Property for the intended purpose

–A Well Drafted Agreement

• Formal Protection–Patents, Trademarks, Copyrights, Trade

Secrets. . .

• Dual Protection

Thank You!