CASE STUDY – PATENT STRATEGY

BENEDIKT NEUBURGER | EUROPEAN AND GERMAN PATENT ATTORNEY | IN PREPARATION OF SESSION ON 10 NOVEMBER 2023

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 CASE STUDY – PATENT STRATEGY
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WHAT HAPPENED SO FAR …

Sylvia is a clever electrical engineer who has spent a lot of time studying and experimenting
with the properties of Lithium batteries. Her goal was to optimize the capacity and durability of
the Lithium batteries using an improved method to switch the individual battery cells during use.

Sylvia is very happy. Her experiments show that she found a way to improve the performance by
almost 10% as compared to prior art solutions.

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 CASE STUDY – PATENT STRATEGY
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TASK 1:
Sylvia tells you about her findings.

„ Please find several scenarios in the following slides.

„ Please advise Sylvia and her employer, if any, what to do in each of the scenarios.

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ASPECTS YOU MAY WANT TO CONSIDER:

Each scenario implies different objects and goals

IP is not an end in itself, it is a means to achieve objects and goals

Within the framework of these objects and goals, think about what would be ideal from an
IP viewpoint for Sylvia and her employer, if any

Take into account the various benefits patents offer. While a benefit may be most helpful in one
scenario, the same benefit may be irrelevant in another of the scenarios

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SCENARIOS 1-3
Scenario 1
„ Sylvia is a researcher in a
company. You are the
manager of the company.
„ The company specialises in
Lithium batteries for use in
mobile phones
CASE STUDY – PATENT STRATEGY
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Scenario 2 Scenario 3
„ Same as in scenario 1 but „ Sylvia is employed at the
the company sells batteries university
for all sort of applications
„ You are working for the
„ The performance of the university's technology
company's batteries is by far transfer centre
better than by all other
competitors
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SCENARIOS 4-6
Scenario 4
„ Sylvia did all the work in her
private lab
„ She wants to establish a
start-up company and asks
for your recommendation
Scenario 5
„ As in scenario 4, Sylvia did
everything in her private lab
but has no interest in
becoming a business woman
„ Nonetheless she wants to
benefit from her invention
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Scenario 6
„ Sylvia believes that her
invention assists in
overcoming the climate crisis
more rapidly and wants the
world to benefit from her
invention.
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TASK 2:
SOME YEARS LATER…

„ Sylvia has successfully founded a start-up that has 30 employees as of today

„ The firm has patent protection for Sylvia’s invention in a number of countries
„ Further improvements of Sylvia’s invention in battery cell management were not further
patented because Sylvia always said “they are anyhow all covered by my original patents”

„ Please discuss whether Sylvia is correct

„ Please discuss the risks of Sylvia’s “strategy”