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EUROPEAN SPACE AGENCY PATENT STRATEGY TRAINING SESSION 08 NOVEMBER 2012 I.

Introduction A. The ASTP Program B. The presenter C. The subjects

II.

A brief look at an issued ESA patent: USPN 8,011,793 A. The patent elements 1. Claims determine scope of patent B. The prosecution history 1. Importance of obtaining valuable claims

III.

Foreign filing strategies A. Determining where to file 1. Determining factors a. Where to commercialize b. Where licensing opportunities exist c. Where counterfeiting might arise B. Determining what to file 1. Not all technologies are suitable in all jurisdictions (software patents) 2. Different types of patent protection available a. Utility patent/invention patent b. Utility model patent c. Design patent C. Determining what mechanism to use 1. Paris Convention 2. PCT a. What the PCT is b. Advantages of PCT filing c. Disadvantages of PCT filing D. Case Study – ESA PCT patent application 1. PCT/EP2010/007044 – LOW WEIGHT, COMPACTLY DEPLOYABLE SUPPORT STRUCTURE FOR SPACE APPLICATIONS a. The application as filed b. The PCT Search Report (1) References cited (D1, D2, D3)

IV.

International prosecution A. No single approach to all countries B. Claim scope may be different C. Importance of qualified foreign associates


V.

Special case – China A. Development of law and practice B. Why file in China 1. Availability of broad scope of protection a. Unique features of utility model patent b. Unique features of design patent C. The enforcement question

VI.

Enforcement A. Patents only have value if they can be enforced B. Enforcement strategies and procedures vary by jurisdiction C. Steps to take to include enforcement as part of a global patent strategy

VII.

Costs and how to control them A. Preparation B. Filing fees 1. PCT fees C. Translation work D. Prosecution 1. The art of interviewing – being proactive in prosecution E. Maintenance costs

VIII.

Commercialization A. Licensing and cross-licensing B. Identifying potential licensees C. Thinking outside the box – reviewing ESA’s patented technologies 1. Medical equipment applications 2. Automotive applications

IX.

Other forms of IP (time permitting) A. Trademarks 1. First line of defense 2. File early, file often, file in multiple classes 3. How trademarks can be a tool in commercial success B. Copyrights 1. Overlap with other forms of protection 2. Protecting designs under copyright as “industrial art” C. Trade secrets 1. Not suitable for all technologies 2. Can be a valuable tool – if the secret can truly be maintained

X.

Wrap-up and questions


2012 nov esa