Developing an International IP strategy Leslie Prichard UK Chartered & European Patent Attorney European Design Attorney culverstons
Introduction Brief overview of IP rights Patents: developing a strategy Patents: International considerations TMs: International considerations Designs: International considerations
What is Intellectual Property? Patents protect an idea that is novel, inventive and industrially applicable Give exclusivity for a product, method, system or use Limited in time (usually 20 years) Granted patents are territorial, but international application systems used to reduce costs before grant Litigation is on a country-by-country basis (usually)
What is Intellectual Property? Trade marks protect reputation Indicate origin and quality of a product or service Limited in scope in respect of the goods and services the trade mark represents, but effectively perpetual if used continuously (and correctly) Litigated locally (if applied for locally) or at ECJ (if unitary right) Can be the strongest of all registered rights as gives the broadest scope of protection
What is Intellectual Property? Registered designs protect the appearance of a product Also colour, shape, texture, pattern Gives exclusivity in product appearance for up to 25 years Can cover different versions of the product in one application Litigated locally (if applied for locally), or enforced across the EU in a single infringement action (if applied for as unitary right)
What is Intellectual Property? Unregistered designs Protect the appearance of a product, but exceptions in relation to must fit and must match Originally developed in the UK, now Europe-wide EU right lasts 3 years, UK up to 15 years Arises automatically when design document is created
What is Intellectual Property? Trade secrets can protect: Virtually anything Technical information e.g. formulas, raw materials, process conditions Business information e.g. marketing plans, names of customers, pricing information Definition of a trade secret: It provides an economic value to owner Not generally known to others Reasonable effort to keep it secret
What is Intellectual Property? Copyright protects the expression of an idea Literary work, artistic work, music, work of artistic craftsmanship, broadcasts, software Lasts for 50 or 70 years from the death of the author, depending on the work Some exceptions for industrial products and processes Broad and long-lasting, often overlooked in contracts Arises at the point the work is created
What Intellectual Property means Together, intellectual property represents the sum total of your creative efforts: Your technical innovation The methods by which you operate your business Your image and presence in the marketplace All the things that give you a competitive advantage IP is a valuable business asset
Patents: deciding whether to file a patent application Technical / Business management Business opportunity? How big? Patent attorney Is the invention likely to be patentable? How broad will the protection be? Can we prove infringement later? Together Is it worth it?
Patents: when it may be better NOT to file a patent application The market is too small Value as a secret is greater than the value of the patent When detection and proof of illegal copying (infringement) is difficult
Patents: United Kingdom Patents A granted UK Patent gives the patent owner: The right to exclude others from making, using, selling, offering to sell, importing or keeping the patented invention for the term of the patent The territorial scope of a UK patent is the UK, Isle of Man and territorial waters It is also possible to extend the UK patent in one or more of the following BOTs and Crown Dependencies This re-registration generally remaining effective as long as the UK patent is kept in force
Patents: Extension of UK Patent The UK patent is also automatically effective, without the formality of registration, in British Indian Ocean Territory
Patents: protection outside of the UK Patents are strictly territorial in nature, however under the Paris Convention, there is the possibility of filing foreign patent applications which might claim the priority date of your earlier application Any such foreign applications must be filed within 12 months of the earlier application It is possible to file separate national applications in each country required There are two further alternative routes available for obtaining protection abroad utilising the Patent Cooperation Treaty (PCT) or the European Patent Convention (EPC) (or other regional application procedures)
Patents: World Patent? There is no such thing as a world patent. However, applications for patent protection in several countries at once may be made using the EPC or the PCT The EPC allows you to apply for a patent in up to 38 European countries by filing a single application a patent is then granted in each of the chosen countries The PCT is the nearest system to an international patent, covering most of the industrialised world a single application is filed to cover a number of countries, but the application eventually splits up and proceeds in each country separately
Patents: UK patent application flowchart Time (months) 0 Apply for a UK patent application 12 Add claims, abstract and search request File foreign applications 15/16 Search Report issued 18 First publication 24 Request examination 36 Examination Report issued Examination procedure 4 to 6 years Grant and second publication
Patents: Typical PCT filing strategy! Apply for a UK patent application Priority date! Optional Report! UK search! Continued prosecution of UK application! File PCT application 12 months! Report ISR 30 months! US national phase entry!!!! Examination/prosecution! Examination/prosecution and grant! Examination/prosecution! Examination/prosecution! US patent granted! CN patent granted! JP patent granted! EP(FR) patent! EP(UK) patent! EP(NL) patent!!! EP(DE) patent EP(IT) patent EP(NL) patent
Patents: PCT Contracting States
Patents: EPO Member States
Patents: EP Applications It is possible to enter the European regional phase (a socalled Euro-PCT application ), or to file a European application directly at the EPO in Munich This single application is searched and examined and, upon grant, results in a bundle of national patents After the examination procedure is concluded, translations of the claims into French and German must be filed before the European patent grants At the time of grant, the European patent splits into a number of individual national patents in respect of the designated states and each national patent has to be renewed annually, as required The unitary patent
Patents: Where to file? Global patenting is very costly even large multinationals do NOT file in every country Each individual patent filing should be carefully considered relative to several factors: Cost Ability to obtain and enforce the right The need for exclusivity Return on investment At every decision point (PCT national phase entry, EPO validation, etc.), and also on a regular basis (at least annually), each application/patent should be reviewed
Patents: Where to file? Very generally speaking, you should be looking very closely at: Your key markets Your key manufacturing countries Your distribution channels What IP will give me the result I want? Which of these rights will be the most effective, as we only have a limited budget
Trade mark filings National trade mark registrations Territorially limited to one country European Community trade mark registration Unitary right EU wide International trade mark registration (Madrid Protocol) Based on a home registration or application Coverage for many countries under one registration
Registered design filings National design registrations Territorially limited to one country European Community design registration Unitary right EU wide International design protection (Hague System) Possible to simultaneously apply for a design in many different countries or territories by filing a single application at WIPO Does not require a prior national right
Thank you! Leslie Prichard lprichard@culverstons.co.uk UK Chartered & European Patent Attorney European Design Attorney culverstons lprichard@culverstons.co.uk 0151 345 3570