Which kind of IP right?
- What is a patent
A patent is a title which provides its owner the right to prevent others from exploiting the invention mentioned in the patent. It does not allow by itself making or selling an invention but it rather gives the right to exclude others from making, using, selling or importing the patented invention.
This monopoly is granted for a specific field, in a defined country and for a maximum of 20 years in return for the full disclosure of the invention with the publication of its technical details.
Hence patent consists on a deal between inventors and society:
- for the inventor - a patent is the way to prevent competitors from copying its invention
- for society - a patent consists on improving innovation process by the public disclosure of innovations. In return investment is encouraged by the delivery of exclusivity right and the derived benefits.
Note: Ignorance that you are infringing someone else patents is not a valid defence before the Court.
- What are the requirements for a patent application?
1. The invention must be a patentable matter
Some matters are excluded from patent protection. Most European countries follow the European Patent Convention (EPC) rules and claim that a patent can not be obtained for:
- discoveries, scientific theories and mathematical methods,
- aesthetic creations,
- schemes, rules and methods for performing mental acts, playing games or doing business and programs for computers,
- presentations of information,
- methods for medical treatment of humans and animals (as opposed to medical products)
- plant or animal varieties or essentially biological processes for the production of plants or animals.
In addition, the invention must not be contrary to public policy and/or morality.
2. The invention must be novel
This notion can be difficult to apprehend so here are some examples where an application may fail due to the novelty criteria:
- an identical product or process or use has already been disclosed
- details of the invention have be made publicly available before the filing date of the application, also call the “priority date” (reference to the following paragraph “applying for a national patent”). Any written or oral presentation of the invention where people could see how it works destroys the novelty of the invention. The publication of research articles or the presentation of a prototype into an Exhibit fair for example has to occur after the priority date.
· Note: Discussions with fellow researchers, business partners and professional advisers may be regarded as implicitly confidential and would not prejudice a subsequent patent application. However as a precaution, signing a confidentiality agreement is advised.
3. The invention must include an inventive step:
This criterion implies that the solution your invention gives to a specific problem is not obvious to a person with average knowledge of the technical field.
4. The invention must be susceptible of industrial application:
Industrial application means that the invention cannot be purely theoretical, but it must be possible to apply the invention for practical purposes. Industrial application includes agriculture.
- How to apply for a patent?
1. Applying for a national patent
The filing of a preliminary application in its own country is a first step which is not mandatory but is regularly done by patent applicants. This first application is indeed important by the fact that it sets the date of application, which is called the "priority date".
Most countries are signatories to an international convention (The Paris Convention) which guarantees that the priority date of an invention filed in one country will be respected in other countries, provided an application is filed in the other countries within 12 months of the priority date.
A separate application has to be filed for each invention. For further information about the requested documents, please refer to the corresponding national patent office (see national procedure pages). The application form must be completed and submitted along with the other requested documents to the national patent office. In general, an application for a patent must be accompanied by that following:
- a specification containing a detailed description of the invention, one or more claims, any drawings referred to in the description or claims and an abstract (a brief description of the invention)
- the required filing fee.
The drafting of patent specifications requires a specific wording in order to have a legal effect: the contents of the specifications determine whether a patent can be granted as well as the scope (set out in the claims) and validity of the granted patent. Moreover, patent law and practice are subtle and complex matters. Consequently, it is advised to call on the services of a patent attorney.
Patent applications are published 18 months after the priority date and every detail of how the invention works is released publicly.
Before that date, patent office experts maintain confidentiality of the information. They check the patentability criteria and compile a search report from the list of published documents considered as relevant in assessing whether the claimed invention is new and not an obvious development of what is already known (so called “prior art”). Once the patent claims are declared allowable (often following a substantive examination) the patent can be granted.
Every applicant can withdraw their patent application at any time until the delivery of the patent. Any withdrawal occurring within the 18-month period results in the fact that the application is not disclosed to the public.
2. In Europe : European patent application
A European patent application facilitates the procedure to obtain protection in the European countries members of the European Patent Organization. European patent applications may be filed at:
- The national patent offices (see national procedure pages).
- The European Patent Office (EPO), located at Munich, The Hague and Berlin (click here for more information on application at the EPO).
The procedure is based on a single application, filed in one of the official languages of the European Patent Office: English, French or German.
A choice must be made about the countries where the final patent will be protected. After examination, the EPO grants a European patent which has the effect of a national patent in each of the countries designated.
Once the patent has been granted it can be maintained in force in some or all of the designated countries. If the language of the patent is not an official language of the designated State, a total or partial translation of the patent may be necessary. For further information please consult the website of the European Patent Office.
The European patent with unitary effect, also called “Unitary patent”, will be one of the possibilities when registering a European patent application. It will be valid for the 25 signatory countries (all EU states except Spain, Italy and Croatia). It simplifies the procedures by requiring the payment of a single renewal fee and no translation – the Unitary patent will be written in English, German or French. As a consequence, it also means that a Unitary patent will be revoked in the territories of the 25 countries.
3. Outside Europe : Patent Cooperation Treaty (PCT)
The Patent Cooperation Treaty (PCT) is a worldwide agreement to simplify the filing and processing of patent applications. Approximately 148 countries, including most industrial countries, signed the treaty.
A single international application is necessary for a patent in all the countries party to the treaty.
Countries in which the international application is desired to have effect ("designated States") should be designed within 30 months after the priority date. The effect of the international application in each designated State is the same as if a national patent application had been filed with the national patent office of that State.
PCT applications may be submitted to national patent offices (see national procedure section) and, if there are no national security constraints, to WIPO in Geneva or to the European Patent Office. For further information consult the website of the World Intellectual Property Organisation.
What is a Utility Model?
Utility Models provide an inventor with an exclusive right granted for an invention, which allows the right holder to prevent others from commercially using the protected invention, without his or her authorization, for a limited period of time.
Though similar to a patent, there are two major differences: To obtain a utility model for an invention, the technological progress demanded is less than for a patent. The maximum duration of protection is shorter than for patents. Utility models are a more flexible and less costly way of protection than patents. In that respect this type of protection is particularly suited to certain types of innovations.
It has different names according to the country it is delivered from:
- Utility model
- Small patent
- Short patent
- Utility certificate
- Short-term patent
The maximum duration of protection vary from country to country but is always shorter than for patents. Utility models are a more flexible and less costly way of protection than patents. In that respect this type of protection is particularly suited to certain types of innovations, e.g. less technologically complex inventions or inventions with relatively short life cycles.
How to obtain Utility Models / Short-term patents?
The availability and rules for utility model registrations vary from country to country, please consult the relevant country information for further information. (see national procedure pages)
The procedure is basically the same as patents, with shorter and less complex procedures.
To obtain a utility model for an invention, the technological progress demanded is less than for a patent. It can be granted without prior examination of the patentability criteria relative to novelty and usefulness.
- PDF and links
For more information on patents:
- What is a trademark?
A trademark is a sign by which a business identifies its products or services and distinguishes them from those supplied by competitors. It can be distinctive words, marks or other features. Its purpose is to establish in the mind of the customer a link between all the different products and/or services that the company offers, and then distinguish them from those supplied by competitors.
A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, logos, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.
- What can be registered?
Any sign capable of being represented graphically can be registered. Thus marks may be a single or a combination of words (including slogans), letters, and numerals. They may consist of drawings, symbols, three dimensional signs such as shape and packaging of goods, audible signs such as music or vocal sounds, fragrances, or colours. Generally, trademarks are protected for specific classes of products and services for periods of 10 years, renewable indefinitely.
The requirements to define a new trademark are:
- It must be distinctive meaning that a customer seeing the mark can immediately link the goods or services to a particular manufacturer / supplier. Commonly used words in their area of goods and/or services are generally not acceptable.
- It must not be deceptive: for example, it should not deceive the public concerning the geographical origin, the nature, the quality, or other characteristics of the product or service.
- It must not be descriptive. It cannot be a simple description of the product or service.
- It must not belong to the exclusions provided by the law e.g. photographs, drawings or names of people or places unless they can be shown to be particularly distinctive.
- It must be in conformity with public policy and morality.
Note: Registration of a company name, a business name or a domain name is not the same as registering a trademark.
- Exception: the well-known trademark
In most countries it is possible to acquire some legal rights to a mark simply through usage: a trademark which is well known benefits from some kind of protection even if it is not registered.
In numerous countries this protection does not only refer to similar products or services, but also dissimilar ones, in order to protect the reputation of well-known trademarks.
Best practices, however, require that a trademark is registered which provides you with a better and stronger protection.
- How to register a trademark?
1. National registration
The application must contain a clear reproduction of the mark filed for registration, including any colours, forms, or three-dimensional features. The application must also contain a list of goods or services to which the mark would apply. Upon receipt of the application in the national office a filing date will be assigned and the application will then be examined regarding its registrability. More information is available on the dedicated pages of the national offices (see national procedure pages).
2. International registration
In order to simplify international registration of trademarks, the Madrid Protocol offers the possibility of filing a single application in order to protect a trademark in several countries, with only one fee. Many countries around the world ratified this treaty administered by WIPO. International registration is necessarily preceded by a national registration of the trademark in the country of origin of the applicant or by a community trademark application (see following paragraph “In Europe”).
An international registration produces the same effects as an application made in each of the countries designated by the applicant. Registration is done in the national registration office of the applicant or at OHIM.
If the national application has been made in the preceding six months, it is possible to claim priority in one of the countries signatories to the Paris Convention. This prevents third parties applying to register for this trademark in other countries within this delay.
For European Countries, a Community TradeMark (CTM) is a single application which can be done directly at OHIM or at any of the national offices (see national procedure pages). It gives the owner protection for all EU Member States. The CTM is all-or-nothing: either you get it for all Member States or you do not get a CTM at all.
- Using trademark
Registrations can be cancelled if the holder is not using a trademark for a long period of time. In some countries, it is important therefore to indicate on goods or services that the trademark is a registered one with the symbols ®, or is in use with TM.
A trademark can be a valuable business asset. As they shift from representing goods and services to the materialisation of a business’s reputation. Some companies spend millions nurturing their corporate identities. As an illustration the President of Coca-Cola stated that even if the corporation's buildings – machinery – equipment - vehicles and physical property… are destroyed, the company can get back on its feet provided the trademarks survive.
A trademark is also a transferable asset.
- PDF and links
For more information on trademarks:
For more information on domain name registration:
- What is a design protection?
Designs are concerned with the features, the appearance of a part or the whole product:
- two-dimensional features such as patterns, lines and/or colour
- three-dimensional features such as shape, texture and/or surface of an article are protectable by design right if they are not dictated by functional considerations.
Registration of design confers on the owner (for a limited time) the exclusive right to use the design and to authorise others to use it. It also includes the right to make, offer, put on the market, import, export, or use a product in which the design is incorporated or to which it is applied, or to stock such a product for those purposes.
The maximum duration of design protection varies from country to country from 5 to 25 years (see national procedure pages).
- What are the requirements for design registration?
The design must be new. Details of the design must not have been publicly disclosed prior to filing the application unless a grace period is permitted (exists in some countries).
The design must have individual character. An informed observer could readily form the overall impression that it can be distinguished from earlier designs.
- Unregistered designs
Some countries provide a short-term form of protection for industrial designs. Registration is not required and protection is deemed to start when the product is placed on the market.
In comparison to registered design, copying of spare parts of unregistered design for example to repair purposes does not infringe such rights.
Best practiced require that a design is registered in order to benefit from a stronger protection.
- How to obtain design protection?
1. National registration
Applying for a national design registration is generally straightforward. An application will have to fulfil certain minimal requirements:
- The applicant must be the owner of the design.
- The owner can be the author of the design or the employer of the person who created the design if this was done in the course of the employment (subject to any contract or agreement to the contrary).
- Any number of representations of the design may be submitted but must be suitable for reproduction.
- One application may include more than one design.
More information is available on the dedicated pages of the national offices (see national procedure pages).
2. International registration
If a national application has been made in the preceding six months, it is possible to claim priority in one of the States party to the Paris Convention. This prevents third parties applying to register for the same design in other countries within this delay.
The Hague Agreement allows applicants to register designs by filing a single application with the WIPO, enabling design owners to protect their designs with minimum formalities in multiple countries or regions. The Hague Agreement also simplifies the management of an industrial design registration, since it is possible to record subsequent changes and to renew the international registration through a single procedural step.
Usually a registered design is published on registration. However, it is possible to ask to defer its publication for up to 30 months from the date of the international registration or, if priority is claimed, from the priority date.
A Registered Community Design (or RCD) is a single EU-wide design registration. Filed in just one language, it grants a right to protection in all member states of the European Union. Registration lasts for five years and can be renewed every five years up to a maximum of 25 years.
- PDF and links
For more information on design protection:
- What is copyright?
Copyright is a legal term describing rights given to creators for their original literary, musical or artistic works which allow them to control their subsequent use. These include for example:
- computer software
- drawings, maps, charts or plans
- photographs and films
- architectural works
- sound recordings
- TV and radio broadcasts
Copyright protection has two components:
- Moral rights, which are not transferable and give the creator the right to be identified as the author of the work and the right to object to any distortion or mutilation of the work.
- Economic rights, which entitle the owner to control the use of its creation in a number of ways (making copies, issuing copies to the public, performing in public, broadcasting etc) and to obtain an appropriate economic reward.
It is important to recognise that copyright is not a monopoly: Two people could independently create identical items. Provided there is no copying, there is no infringement and both can hold copyright in their respective works.
- How do I obtain copyright protection?
The creators of such works automatically acquire rights at the date of the creation of the work, which mean that they can control their further use. The only absolute requirement is that the work is original, i.e. not copied from somewhere else and has required original intellectual effort by the author.
There is no formal registration process required to obtain protection. However, some national laws allow registration of works. Additionnally in some countries registration can serve as evidence in court in case of infringement.
The creator is the owner of the right but there can be situations e.g. employment contracts or creation of a collective work where the ownership is transferred.
In general, copyright protection lasts until 70 years after the death of the author. Though some exceptions may apply.
- Related Rights to copyright
A field of rights related to copyright has rapidly developed over the last 50 years. These related rights grew up around copyrighted works.
They provide similar protection, although often more limited and of shorter duration. They cover a range of rights, which have been derived from copyright principles and are granted to performing artists, producers of sound recordings, broadcasting organizations in their radio and television programs, and creators/owners of databases etc.
- PDFs and links
For more information on Copyright protection:
Know-How and Trade secret
Trade secrets and Know-How are two kinds of confidential information which give a competitive advantage to businesses which hold them with regard to their competitors.
- Trade secret
Trade secrets concern secret or proprietary information of commercial value. These are not covered by specific statutory provisions as other types of IP are, although there could be aspects of contract law, or employment law that might be relevant in a particular case.
The level of protection conferred to trade secrets varies significantly from country to country. The notion of secret is mentioned in the Commission Regulation No 772/2004 as being "not generally known or easily accessible". Indeed, trade secret represents an interest for its holder, which is often a competitive advantage.
Trade secrets do not receive any protection from intellectual property rights, even though a doctrinal discussion exists on this issue and some authors consider trade secrets themselves as an IP right.
In any case, they could fall under the scope of protection of civil law and unfair competition law. In addition, some countries also provide penal sanctions for persons who fraudulently disclose an industrial secret.
Know-how is defined as a package of non-patented practical information, resulting from experience and testing. In addition, Know-how has to be "secret, substantial, identified and valuable". It is composed by information with economic value, not accessible to the public, transferable and non-patented. In addition, know-how should be characterized and / or described on a material support.
- Idea and concept protection
Ideas and concepts may fall under trade secret and know-how protection as they may contain useful and technical information, required for the manufacture of a product or related to the enterprise, customers, etc which is not accessible to the public and not already patented.
Note: a trade secret or know-how may be kept by including appropriate rules in an employment contract or by using specific confidentiality agreements.