Conventional wisdom

Click here for a more detailed presentation on international co-operation on patents done by David Copp, Managing Partner at Dummett Copp.

Engineers always seek to break new ground in their work. Once they have overcome the obstacles of technical innovation, they then face a second challenge — protecting the intellectual property (IP) created through their efforts.

In an increasingly globalised economy, this will often involve taking steps to safeguard IP beyond the UK's borders.

With this in mind it is useful to take a look at the three main types of intellectual property which have a registration system — patents, registered designs and trademarks. Intellectual property is, of course, wider than these three subjects and covers other unregistered rights.

Patents are used to protect functional ideas and inventions — the way things work. Trademarks protect names and brands, and registered designs protect the appearance of a product.

Most developed countries have operated registration systems for patents, designs and trademarks since at least the beginning of the 1900s. In fact, it was in 1884, that the Paris Convention for the Protection of Industrial Property was established. The convention has been updated a number of times since then, and has now been signed by virtually every country in the world.

The basic principle established then still underlies the convention. This principle states that if an application for protection of an invention, trademark or a design is made in one convention country, then that application establishes the beginning of a priority period, and an application filed in another country within that period will be deemed to have been filed on the same day as the 'home' application. The priority period is 12 months for patents and six for trademarks and designs.

The existence of this period is very important, because a patent application can only be valid if the invention is new when the application is filed. While it is relatively easy and inexpensive to file one application in your home country, filing in other countries — with the necessity for translations and so forth — is very onerous.

The existence of the priority period means that the filing of the first application effectively gives a worldwide priority date, respected in all convention nations, which gives the owner of the right some breathing space before having to invest in protection in other countries. Another way of looking at it is that when a first filing has been made in one country, the convention gives you an option to apply — within six or 12 months — for equivalent protection in others.

When I qualified as a chartered patent attorney in 1976, obtaining protection abroad had to be done on a country-by-country basis. Each nation had, and still has, its own system and its own Patent Office, and until 1978 it was necessary to go through parallel processes in all countries where protection was needed.

In 1978 the European Patent Office was established, which now provides a single process for the granting of patents in those 31 European countries belonging to the European Patent Convention (EPC). Unfortunately, this group is not the same set of countries as belong to the EU.

Also in 1978 a further international treaty, the Patent Co-operation Treaty (PCT) was established. Virtually all industrialised countries now subscribe to this system and the effect is that the first part of a patent application procedure can be done through an application under the PCT, thus saving substantial cost and deferring the time when the owner of the invention has to make firm decisions about the countries where protection is required.

For trademarks and designs, we now have an EU-wide system which sits alongside the continuing national systems. This is administered from Alicante, Spain, by the Office for Harmonisation in the Internal Market (OHIM). Through this, it is possible to obtain a single EU-wide registration of a trademark or design.

This is a necessarily broad overview of the currently existing structure for protecting IP rights outside the UK. The EPC and PCT have undoubtedly been of great benefit to those seeking protection in a number of countries, but the rules governing them are quite complex and it would be a brave company which tried to operate the system without professional guidance.



David Copp is managing partner at patent and trade mark attorney Dummett Copp.



Click here for a more detailed presentation on international co-operation on patents done by David Copp, Managing Partner at Dummett Copp.