Granting and enforcing patents are governed by national laws, and also by international treaties, where those contracts are used in national legislation. Therefore, patents are territorial in nature.
On the national/domestic level of the country founds the Patent Offices, which are responsible for the operation of the national patent system under the patent law. In general, Patent Office is responsible for granting patents, infringement is the responsibility of the national/domestic courts.
There is a trend towards global harmonization of patent law, while the largest activator is the World Trade Organization (WTO). Key international convention relating to patents is the Paris Convention for the Protection of Intellectual Property, first signed in 1883. The Paris Convention sets out the scope of the basic rules relating to patents, and although the Convention has no direct legal effect in all national/ domestic jurisdictions, the Convention principles are enshrined in all relevant existing patent systems. In addition, there are international treaty procedures, such as the European Patent Convention (EPC) procedures, managed by the European Patent Organisation (EPO), and the Patent Convention Treaty (PCT), administered by the World Intellectual Property Organization (WIPO).
A patent is a form of legal protection of an invention that meets the statutory criteria for such protection. Patentee has the exclusive right to exploit the protected invention, to provide consent for the use it by others. Invention, on which a patent was granted, such a product, production equipment, chemical or manufacturing process must not be made without the consent of the owner, offered for sale or used by third parties for industrial or commercial purposes. If the patent relates to the production processes and procedures, the patent owner may prohibit third parties to use those procedures and processes. Prohibition rights can be applied also to products that are the direct result of the protected process or procedure.
Patents are granted for inventions which are new and are the result of inventive activities and they can be used in industrial area. Therefore, the manufacturing process and the product itself are patentable. The novelty lies in the fact that the solution is not a part of the state of the art. It is therefore a world novelty.
Particularly following are not considered for an invention: discoveries, scientific theories and mathematical methods, aesthetic creations, schemes, rules and methods for performing mental acts, playing games or doing business, computer programs, or information providing. Patents cannot be granted to plant varieties and animal breeds and biological production of plants and animals, methods of surgical or therapeutic treatment and diagnostic methods practiced on human or animal body and for inventions whose exploitation would be contrary to public order or morality.
The patent application is applied upon filing a written application to the relevant patent office. The applicant may be inventor alone or his/her legal representative. The application must then include a description of how to create and use the invention, it must contain detailed information for a person skilled in the technical field how to create and use the invention. In some countries there are requirements for the provision of specific information, such as the usefulness of the invention, the best way of implementation of the invention known to the inventor, or a technical problem or problems solved by inventor. There may also be drawing/s provided by inventor.
After filing an application, the application is often called as a patent pending. Although this term does not provide legal protection and thus a patent cannot be enforced, it provides a kind of warning for possible offender that in case the patent is granted, he/she may be liable for damages.
Patent protection also brings many benefits. A patent entitles you to restrict the others in copying, manufacturing, selling or importing the invention without your consent. The very existence of the patent restricts the others from trying to use your invention. If this is not so, you are entitled to take legal steps to stop others using your invention and claim damages.
- to sell an invention and all IP rights
- IP rights to grant a license to someone else retaining all IP rights
- or to discuss the patent with the other to set up a business based on this patent.
If you do not have a patent on your invention, then others are entitled to use, manufacture or sell your invention without your consent.
Anyone who applies for a patent, whether at national or international level, must find out whether his/her work is new or is already owned or if it is claimed by someone else or not. To find out these information International Patent Classification (IPC) is used – the classification system established by the WIPO, which organizes information relating to inventions.
International Patent Classification (IPO) is a hierarchical system of classification of patents developed and based on the Strasbourg Agreement in 1971, regularly updated, composed of representatives of States Parties to this Agreement and observers from other organizations such as the European Patent Office (EPO).
Industrial property rights are territorial in nature, applies only to the territories for which the respective powers of the grant authority, which granted the rights. Initially, these authorities are national patent and trade mark offices, under international treaties there are several so-called regional authorities. Substantive and formal requirements for applications, the procedure of the registration with the foreign office, including official language, fees, time management, etc. are given by the legal regulations of each state and may, in particular as regards the formalities of registration and the registration procedure, vary from state to state. In the vast majority of states, however, the applicant is domiciled in their view abroad, he/she must choose to interact with the local office qualified, i.e., in the state for such services legitimate representative. Then, the representative shall provide the applicant with all information relating to applying abroad. For registration of industrial property rights abroad is an important concept called “claim priority”. This Institute allows maintaining the priority of the first filed application for registration filed with the same subject in other states. The condition is that the application claiming priority must be applied the first from the date of filing (“priority”), which established the “claim priority”:
- within 12 months in the case of patent applications and utility model applications
- within 6 months for industrial design applications.
Patent protection is limited geographically, i.e. it is possible to register a patent in force only in a particular area or to extend the validity of each country in Europe or the USA. Register the invention can be conduct abroad in three ways: national way, European patent and international patent application – PCT.
The applicant can apply the invention directly in any state in which he wants to have the invention protected. This is necessary in each state to choose a representative who is authorized to represent the applicant before the competent authority, to translate the description of the invention, patent claims and abstract in the official language of this office and pay the fees.
To register a patent you apply by patent application filed on the prescribed form of the Industrial Property Office (IPO), where one can also obtain the form for free. In addition to this completed application form for granting of a patent application in duplicate, contains a description of the invention, at least one patent claim, or drawings and abstracts.
The invention must be explained in the application so clearly and completely so that an expert could carry it out and from the perspective of effects of a patent it should also be clearly and precisely distinguished what the patent protects. The patent claims must contain clear and concise definition of the object to be protected by patent. In the abstract, which is used mainly for retrieval purposes, a brief characteristic of the subject to be patented is given.
By submitting an application for a patent applicant enters a priority. This means in particular that in granting protection to the applied object or its publication in the proceedings before the patent application another applicant cannot be granted to effective protection of the same subject entered later on.
If the application does not contain clearly non patentable solution and if there are no deficiencies that would prevent its publication, the IPO publish the application after 18 months of priority and that publication of an application in the IPO Gazzette.
At the request of the applicant or another person IPO subject the application to examination to find out whether it meets the conditions for granting a patent, i.e. the condition of novelty, inventive step and industrial applicability. The request for substantive examination must be submitted no later than 36 months after filing. If the applied technical solution meets the legal requirements, IPO grant the patent for the invention.
The patent is valid for 20 years from filing patent and the patent effects occur after the date of notification of the patent in the Gazzette. After the patent granting, the IPO shall invite the patentee to pay the first maintenance fee for the current term of the patent. Fees for maintaining patents in force for the next pay period after are paid I without IPO without notice each year, always before the end of the previous year of the patent.
If the applicant wishes to obtain a patent for countries which are member states of the European Patent Organisation (EPO), then it is possible to apply for a European patent. EPO contracting states as to 1st May, 2010 are: Belgium, Bulgaria, Czech Republic, Denmark, Estonia, Finland, France, Iceland, Italy, Ireland, Croatia, Cyprus, Latvia, Lithuania, Luxembourg, Monaco, Netherlands, Norway, Poland, Portugal, Austria, Greece, San Marino, Slovakia, Spain, Sweden, Switzerland and Liechtenstein, Great Britain, Slovenia, Hungary, the Former Republic of Yugoslavia, Macedonia, Romania, Turkey, Malta, Albania (37 states). Non-member states on whose territory there may be effects of a European patent on the basis of a “system extensions” are currently Serbia, Bosnia and Herzegovina, and Montenegro.
European patent application may be filed by any individual or legal entity, regardless of citizenship, registered office or resident. However, applicants who are not domiciled or have no registered office in a contracting state shall be represented in all proceedings before the European Patent Office (EPO), with the exception of the European patent application, by a representative who is registered on the list maintained for this purpose by EPO. The list of representatives, who are authorized to represent applicants before the EPO, can be found in the EPO.
European patent application can be filed:
- at the European Patent Office in Munich or at its Hague branch or in his office in Berlin,
- where the law of a Contracting State permits or prescribes, at the central industrial property office or other competent authority of that Contracting State.
Patent Convention Treaty (PCT) allows by one and only so-called international application to fulfill the function of application in all PCT contracting states. After entering the national phase of the proceedings applicant may obtain protection in 142 contracting states and four regional patents (including European) (as to the 1st December 2009). The international application is filed with the IPO in English, German or French, the application of the international application must be in the same language and may be obtained free of charge at the IPO. The application can also be filed also in Czech, with the need, within one month from the date of the international application, a translation into one of the above mentioned languages. An application form must always be in one of these languages. It is possible to use the electronic form of application via the web site of the World Intellectual Property Organisation WIPO.
The international phase of the procedure involves carrying out international examination and international publication of the application within 18 months from the priority. Based on the results of the international examination and issuing an opinion on the patentability, the applicant decides whether to continue the proceedings or not. Further, applicant can request for international preliminary examination a period of up to 22 months from the priority date, respectively within three months of a examination report and written opinion, whichever period expires later. The proposal for international preliminary examination as well as the relevant payment shall be addressed to the EPO in Munich, which performs examination for international applications filed in the country. The granting of required protection itself is done at the national phase of the procedures in each country separately. The deadline for entering the national phase is 30 months from the date of priority and each office may set a longer period. However, some authorities have retained the earlier deadline for entering the national phase of 20 months. Each office announces the relevant facts to the International Bureau of WIPO and it publishes information. It is therefore necessary that the applicant verifies in time, for example using the WIPO website in the PCT Applicant’s Guide, the deadline for entering the national phase set out by the authority with which he/she intends to apply for national or regional patent, finds out the possible types of protection in that country (patents, utility models, etc.) and other conditions necessary for the continuation of proceedings in the national stage.