EUR 17032 - ENFORCING SMALL FIRM
96 Pages
English
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EUR 17032 - ENFORCING SMALL FIRM'S PATENT RIGHTS

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96 Pages
English

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Enforcing small firms patent rights ; *#»PW^D t part of the Fifth Research Framework Programme A publication from the Innovation/SMEs programme L European Commission ENTERPRISE DC Contact: Mr M. Schmiemann Address: EUFO 2283 L-2920 LUXEMBOURG Fax: (352)43 01-32084 E-mail: manfred.schmiemann@cec.eu.int European Commission Enforcing small firms' patent rights Directorate-General for Enterprise EUR 17032 LEGAL NOTICE Neither the European Commission nor any person acting on behalf of the Commission is responsible for the use which might be made of the following information. The views in this study are those of the authors and do not necessarily reflect the policies of the Euro­pean Commission A great deal of additional information on the European Union is available on the Internet. It can be accessed through the Europa server (http://europa.eu.int). Cataloguing data can be found at the end of this publication. Luxembourg: Office for Official Publications of the European Communities, 2001 ISBN 92-894-0633-X © European Communities, 2001 Printed in Italy PRINTED ON WHITE CHLORINE-FREE PAPER Table of Contents Page Acknowledgements 7 Executive Summary 9 ObjectivesMethodologyQuestionnaire resultsCase studies 10 Recommendations1 1. Objective4 2. Methodology5 2.1 Identification of firms to be surveyed 16 2.1.1 EU-originating United States patents2.1.2 Assumptions about invention quality9 2.1.

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Enforcing small firms
patent rights
;
*#»PW^D
t
part of the Fifth Research Framework Programme A publication from the Innovation/SMEs programme L European Commission
ENTERPRISE DC
Contact: Mr M. Schmiemann
Address: EUFO 2283
L-2920 LUXEMBOURG
Fax: (352)43 01-32084
E-mail: manfred.schmiemann@cec.eu.int European Commission
Enforcing small firms'
patent rights
Directorate-General for Enterprise
EUR 17032 LEGAL NOTICE
Neither the European Commission nor any person acting on behalf of the Commission is responsible
for the use which might be made of the following information.
The views in this study are those of the authors and do not necessarily reflect the policies of the Euro­
pean Commission
A great deal of additional information on the European Union is available on the Internet.
It can be accessed through the Europa server (http://europa.eu.int).
Cataloguing data can be found at the end of this publication.
Luxembourg: Office for Official Publications of the European Communities, 2001
ISBN 92-894-0633-X
© European Communities, 2001
Printed in Italy
PRINTED ON WHITE CHLORINE-FREE PAPER Table of Contents Page
Acknowledgements 7
Executive Summary 9
Objectives
Methodology
Questionnaire results
Case studies 10
Recommendations1
1. Objective4
2. Methodology5
2.1 Identification of firms to be surveyed 16
2.1.1 EU-originating United States patents
2.1.2 Assumptions about invention quality9
2.1.3 Techniques for identifying SME-owned
European patents 1
2.1.4 National patents 21
3. Survey work2
3.1 Questionnaire design
3.2e mailing policy6
4. Pilot study 2
4.1 Background to the 'Voluntary Patent Pool' proposal 27
5. Telephone and personal interviews 29
5.1 Recruitment of students as interviewers
5.2 Support provided to interviewers 30
6. Questionnaire responses
6.1 Response rates 36.2 Analysis of questionnaires 31
6.2.1 to 6.2.13 Responses by question 31-35
7. Telephone and personal interviews6
7.1 Court awards to patentees7
7.2 Intimidation 38
7.2.1 The importance of quick decisions to SMEs 3
7.2.2 The high cost of distraction from innovative work 40
7.23 More on intimidation 4
73 The special problem of infringement in the United States 41
8. Recommendations2
8.1 Arbitration must replace litigation 4
8.2 Litigation is 'inefficient, ineffective and undesirable' 45
83 The U.S. National Patent Board6
8.4 A European move towards intimidation7
8.5 Need for arbitration to be compulsory 4
8.6 How might compulsory arbitration be achieved? 48
8.7 Arbitration and the subsidiarity principle9
8.8 Part of the Utility Model Directive? 4
8.9 Dealing with the U.S. District Court issue 51
9. The Voluntary Patent Pool (Patent Defence Union)2
9.1 Patentees' approval for the Voluntary
Patent Pool concept 52
9.2 The Patent Defence Union (PDU)3
93 Possible practices of the PDU
93.1 Disputes between PDU members
932 Disputes with non-members 54
9.4 More use of injunctive relief6
9.5 Changes in large-firm decision-making7 9.6 Top management attitudes 59
9.7 What size of firm could be a member? 60
9.8 Should foreign subsidiaries in the EU be permitted to join? 61
9.9 An ally in the U.S. Small Business Administration? 62
9.10 Use of WIPO's arbitration arrangements 6
10. Financial aspects of the proposed Union4
10.1 Pump-priming funds 65
10.1.1 Diverting a fraction of patent renewal fees? 66
10.1.1.1 Effect of EU unitary patent 67
10.1.2 Possible EU subsidy?
11. Other aspects of the Patent Defence Union8
11.1 Steering Council 6
11.2 Location of PDU's Headquarters9
11.3 Legal structure of the PDU 70
12. Comparisons between patent insurance and the PDU 7
12.1 'Moral hazard'1
12.2 Views of official bodies2
123 Operational differences:4
123.1 The patentee 7
123.2 The infringer5
1233 The protecting agencies6
13. Summary of conclusions and recommendations 77
Appendix 1 - Working Documents9 x 2 - Compulsory arbitration with legal aid 8Acknowledgements
The research reported in the following pages was funded by the European
Commission, Enterprise Directorate-General, under Study Contract No EIMS
98/173: Patent Defence in Europe. I also wish to acknowledge the collaboration
of the following academic colleagues and their graduate students in all EU
countries in the work of collecting the data and interviewing patentees.
Austria: Mr. Domenik Walch.
Belgium: Ms. Gwen Jaffro.
Denmark: Dr. Rune Skouby; Rune Munk.
Finland: Professor Niklas Bruun; Ms. Già Backström.
France: Professor Michel Fender; Dr. Suman Modwel; Mr. Peter Schiemann.
Germany: Professor Martin Moehrle; Mrs. Grit Kreusch; Mr. Lars Hoffmann;
Mr. Freund
Great Britain: Dr. Baggy Cox; Mr Matt Johnson; Ms. Joanne Norman.
Greece: Dr. Nikolaos Varsakelis; Mr. Nikos Mouhtsis.
Italy: Dr. Giovanni Casucci.
Netherlands: Dr. Anthony Arundel.
Portugal: Professor Joseph Bigio; Mr. Paulo Bessa.
Spain: Mr. Christian Duran
Sweden: Professor Jan Rosén; Ms. Caroline Lagercrantz.
Throughout the work Mr. Walter Hölzer, President of the Austrian Association
of Patent Agents, provided most valuable advice. Ms. Helen Moohan of the
European Patent Office dealt with great kindness and patience with our many
requests for data and assistance. Mr. Jim Hirabayashi of the United States
Patent and Trademark Office provided the special tabulations of Europe-
originating "small entity" patents which were the core of the empirical research.
Ms. Carol Anderson of Reed International, kindly arranged for us to obtain firm size information from the Kompass Directories which they publish, to
enable us to identify small-firm owners of European Patents.
Indispensable contributions were made by my research assistants, Ms. Aoife
Keogh and Mr. Andrew Harbison. Mr. Harbison developed special computer
programs to enable the mailing lists of patentees in every EU country to be
developed from the mass of data obtained from the European and United States
Patent Offices, filtered by the Kompass data. Ms. Keogh handled all the
contacts with nearly 5,000 patentees in eleven languages, as well as extracting
and disseminating information on several hundreds of their European and U.S.
patents, with altogether admirable efficiency.
WILLIAM KINGSTON,
School of Business Studies,
Trinity College,
DUBLIN.
Tel. +353 1 608 1479
Fax +353 1 679 9503
e-mail: wkngston@tcd.ie
© ECSC-EC-EAEC Brussels-Luxembourg, 2000.
Neither the European Commission, nor any person acting on behalf of the
Commission, is responsible for the use which might be made of the information
in this report.
The views expressed in this report are those of the author, and do not
necessarily reflect the policies of the European Commission.