Unofficial Registers

This is one of the few scams that operate in the IP world.

If your trade mark application has been accepted, or your patent application has reached the ripe old age of 18 months, then it will be published by the relevant IP office.  This is generally quite useful – third parties get to see your IP right and are put on notice.  Some enforcement rights may also start to have effect, depending on the jurisdiction and the type of publication.  However, there is one distinct downside.

Scammers get to see your IP right, your name, and your address.  And they use it.

Generally, they send a letter telling you about their wonderful new Register of All The Really Good IP Rights in the World (or something along those lines).  This Register will, apparently, contain an exhaustive list of all the IP rights that third parties need to know about, and inclusion in it will mean that they will voluntarily steer clear of your invention/trade mark/whatever.  And all in return for the very reasonable publication fee that they would be grateful if you could send by return.

Sometimes, the letter is constructed to look like an invoice, with a remittance advice at the bottom that is oh-so-convenient for you to pass to your accounts department to sort out.  The worst ones are dressed up to look like they came from the IP Office at which you filed the application, and are worded to appear to be essential payments in order to maintain the validity of the IP right.

These are scams.  Ignore them.  Or, better, contact your local Trading Standards organisation (or its equivalent in your country) and ask them to do something about it.

If you’re not convinced that these things are scams, then let me point two salient facts out.

  • First, the scams that look like official requests for payment.  All IP Offices will respect your decision to nominate an agent or attorney to represent you.  They will always send official communications via that agent or attorney.  Therefore, if it has come to you direct, it is not official.
  • Second, there is the question of the scams that admit they are an independent and unofficial Register.  Let me just say that in nearly 20 years in this profession, I have seen many, many letters addressed to my clients offering this service.  I have never once been offered a copy of the final Register.  Not once.

If you’re still unsure, send a copy of the letter over to your agent or attorney.  He or she should be very happy to look at it and confirm whether it is a scam or not.  I always am, so if yours isn’t, contact me instead and ask about moving your work to someone who attends to their client’s needs…

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How do I calculate a time limit in a European patent application?

This is a tricky one, as it depends on the type of time limit that has been set.

The deadlines for paying most official fees are set with reference to the European Patent Convention. For example, the filing and search fees must be paid within one month of filing the application. If you file an application on 9 July 2010, the filing and search fees are due on 9 August 2010.

If the due date falls on a day on which the European Patent Office is closed (i.e. at the weekend, or on certain public holidays), the deadline is extended until the next working day. So, using the above example of filing and search fees, if you file the application on 14 July 2010, the fees should be paid by 16 August 2010 (i.e. 14 August 2010 is a Saturday, 16 August 2010 is the next working day).

However, many communications from the EPO also set a deadline for response. This might be a response to an examination report, or a deadline for filing an appeal from an adverse decision. Those communications refer to deadlines using the phrase, “within x months of notification of this communication”. Note that this refers to the date of notification of the communication, not the date of the communication itself.  Under the terms of the EPC, notification is deemed to take place 10 days after the date of the communication.  The actual date of receipt in that 10-day window is irrelevant, provided that it does in fact arrive.  (If it arrives later than 10 days, then work from the date of actual receipt; it would be advisable to inform the EPO of this, though).

So, in these cases, the Applicant usually has a little extra time to respond to the official communication. However, the time limits must be calculated correctly. Notification relates to the receipt of documents from the EPO. Therefore, the 10 days must be added at the beginning of the period for response. Adding the 10 days at the end of the period for response often leads to a different date (and a response that is late filed!). Take an example:

  • An examination report is received with a date of 24 May 2010, and a response must be filed “within four months of notification of this communication”.
  • Correct deadline: 3 October 2010 (24 May + 10 days = 3 June; 3 June + 4 months = 3 October).
  • Incorrect deadline: 4 October 2010 (24 May + 4 months = 24 September; 24 September + 10 days = 4 October)

If you extend the deadline by a number of months, the process for calculating the time limit is the same, but you need to bear in mind that it is the period which is extended, not the deadline. So, take the date of the communication, add 10 days, then add the number of months for response, then add the number of months of the extension, and (only) then extend to the next working day if the EPO is closed on that day.

See also “How do I extend time limits at the EPO?

Post provided by Chris Hall, patent attorney
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How do I extend time limits at the EPO?

There are two mechanisms for extending time limits at the EPO. The first is to request an extension prior to expiry of the deadline. These extensions do not require payment of official fees, but are discretionary and only apply to certain time limits. The second is under the EPO’s further processing procedure, which requires payment of an official fee.

Discretionary extensions
Time limits that are set in official communications from the EPC are often extendible by a number of months, without payment of any official fees, provided the extension is requested in writing before the end of the original deadline. However, these extensions are at the discretion of the Formalities Examiner handling the case.

The only extension that can be relied upon is the extension to the period for responding to examination reports. European practice is that these periods can nearly always be extended to a maximum of six months from the date of the communication (i.e. one two-month extension to an original four-month period for response).

Further extensions are very rarely granted.

Further processing
Deadlines for paying official fees can only be extended under the “further processing” procedure. In addition, deadlines which have been extended as far as possible using the discretionary extensions described above may be further extended using further processing.

The procedure is in fact an automatic reviving of an application or some other right which has been deemed abandoned or withdrawn. Once the deadline has passed (whether extended or not), an official communication is issued noting the loss of rights, e.g. the deemed abandonment of the application. If, within two months of that communication, the further processing fee is paid and the “missing act” completed, the loss of rights is deemed not to have occurred and the application is kept pending. No third-party rights accrue in the time the application is deemed abandoned.

The extension provided by further processing is therefore equal to two months, plus the time taken for the EPO to issue the communication noting the loss of rights.  This is usually about three months in total.

The further processing fee changes depending on the nature of the deadline that is to be extended. If the missed deadline did not involve the payment of an official fee, the further processing fee is applied at a base rate (equal to €225 at the time of writing). If the missed deadline involves the payment of an official fee, however, the further processing fee is 50% of that missing fee.

Post provided by Chris Hall, patent attorney in our Oxford Office
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What are the time limits for filing a registered design application?

Most countries require a design to be ‘novel’ – this means it must not be publicly disclosed (anywhere in the world) prior to filing an application to register the design at the relevant Patent Office.  However, there are some exceptions to this:

  1. there is a 12 month ‘grace period’ for filing a UK (and a Community design application which covers the whole of the EU) for the applicant’s own disclosures – although it should be noted that a non-confidential disclosure by the applicant may still invalidate a later filed design application in countries which do not have this grace period). 
  2. a foreign application filed within 6 months of your UK (or EU) filing date is effectively back-dated to the UK (or (EU) filing date so disclosures within this 6 month period do not affect the validity of the foreign application.  This 6 month period cannot be extended, though! 
  3. if the design is still confidential, it can be filed in other countries after the expiry of the 6 month period referred to above.  If there is a possibility that you wish to do this, it is best to request ‘deferred publication’ of the UK (or EU) application so it does not proceed to grant too quickly.  The design is published at the point when it is granted, so if you do not request this then there is a risk the UK (or EU) design application will proceed to publication and this publication prevents you from seeking valid protection in other countries.  Grant can be very quick (sometimes in just a few weeks), so this needs to be thought about in advance.
  4. in our experience, the shape and appearance of a product has a tendency to evolve or change in the period leading up to launch of the product.  Unless, you are sure the product design is ‘fixed’, it can therefore be best to seek registration only shortly before launch, to avoid the expense of filing a new application each time the shape of the prototype changes.

Thus, design protection can be a quick (and relatively inexpensive) way of protecting the shape and appearance of a product, but care needs to be taken to get the timing right.

Provided by Steve Unwin, partner in our Oxford Office.
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Why US inventors should not rely on the grace period

The USA does, of course, define a “grace period” in its patent law.  This is a period of one year prior to the filing date of an application, during which the applicant’s own disclosures do not count against the validity of a patent granted on the application. 

Many US inventors greatly appreciate this rule.  It gives them the opportunity to try out their invention in the market before having to incur the costs of seeking patent protection.  However, I strongly recommend that they do not do so.

The reason is simple; almost everywhere else has a requirement of strict novelty, or (in other words) no grace period.  So the moment you disclosed your invention in the USA, your right to patent the invention almost everywhere else just died.

Fortunately, there is an alternative.  File a “provisional” patent application instead.

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Should you file applications via the PCT?

The “Patent Co-operation Treaty”, or “PCT” is an international agreement allowing applicants to file a single application in their home territory, which has effect in all PCT states (which is, these days, pretty well everywhere).  This effectively postpones the deadline for filing in individual national patent offices from 12 months to 30 months*.  There is a cost, however; the PCT application adds about £3,500 in official fees and professional charges to the overall bill.  So, it is worth it?

In my opinion, the answer is a resounding “yes”.  I’ll try to explain why.  First, a few facts.

For an individual application that has proceeded to grant in a number of states, the use of the PCT for that application will have been, with hindsight, more expensive than direct national filings.

This follows from the fact that the work needed to convert a PCT application into a regular national filing is roughly the same as that in filing the application at 12 months.  Thus, the PCT costs add to the rest of the case costs.

One problem is that the decisions about what to do have to be made in advance, not with hindsight. 

Here is the first reason fro using the PCT.  Over an entire patent portfolio, in which some cases will be successful and go to grant and some will not, the use of the PCT for the whole portfolio will result in lower overall costs. 

This is because through the PCT, the cost accrues incrementally and in line with increasing knowledge of the application’s prospects.  This allows you to drop the cases that are not certain enough – the money saved in this way typically funds the additional cost of the PCT filings for all the others, with some to spare. 

For example, Procter & Gamble are quoted by WIPO as saying that they drop 20% of their applications at the 30-month deadline as a result of art located by the PCT search.  That sounds about right to me, in the light of my experience.  The money saved by not filing that 20% of applications, and not arguing with examiners until you are blue in the face and finally give up, will be substantial.  In my experience, it is easily enough to pay for PCT applications for the entire portfolio. 

You are also more likely to be able to assess the commercial importance of an idea at 30 months than at 12 months. 

This allows you (either) to file the less important cases more narrowly, thereby saving costs again, or file more important cases more widely (depending on your point of view).

Also, at the 30-month stage it is easy to introduce an amendment that limits the claim scope down to what you believe to be allowable, based on the PCT results.  In addition, you can often present arguments explaining why objections raised in the PCT are not correct.  Sometimes this will be a waste of time, because the examiner in the national patent office will often be different to the one who did the PCT work, so they will naturally come to their own opinion.  Thus, this will not guarantee a smooth ride in the national phase (nothing can, sadly) but it often helps by eliminating one round of examination – over a portfolio, this is a substantial saving.  

So the PCT allows you to reduce the costs over a portfolio, by spending more on the cases that are successful but saving distinctly more on the cases that the PCT allows you to identify as non-winners before substantial sums are incurred.
Now, there are two ways in which we could escape this and make national applications the cheaper option.  One is to be more confident prior to filing the application at all – i.e. only file the winners, therefore we don’t need the PCT in order to identify them.  This requires pre-filing searches of a quality as least as good as a PCT search.  Typically, such searches are more expensive than a PCT application, unless you already have extensive in-house searching facilities.  So overall, you will end up spending even more – and bringing those costs even earlier in the life cycle of the invention, before you know its commercial importance.
The other way is not to take any notice of the PCT results and press on anyway for every application!  I wouldn’t recommend that, for obvious reasons!
So, although it seems counter-intuitive when looking at one application with hindsight, my experience is that the lowest-cost strategy is as follows:
1. File a local application with a search request – for me, that is the UK Intellectual Property Office.  This gives me the benefit of the UK IPO search, which is not as rigorous as a PCT or EPO search but is easily the most cost-effective.  Use that search as a first rough cut to eliminate clearly unpatentable ideas and direct the scope of the potentially allowable applications more accurately.
2. File a PCT at 12 months.  Give the search results serious consideration; bear in mind that patent office examiners are uniformly pessimistic, but if they do succeed in showing the invention to be unpatentable then take note and drop the application.
3. At 30 months, divide the remaining applications into two groups based on their commercial importance.  File the important cases widely and the less important cases in just the core countries (e.g. just EP+US, or EP+US+JP).  Where necessary, enter the national phases with an amendment.
So that’s my recommendation & the brief reasons for it.

*It’s actually a lot more complex than that, with many nuances.  But mostly, you needn’t worry about them.  Unless you’re a patent attorney, or you are handling the application yourself.
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When are patent renewal fees payable?

This is one of my favourites.  The first renewal fee you pay for a European application is the third renewal fee, which is paid at the second anniversary.  How can that be?

It’s actually quite simple. Renewal fees are due annually, and in most countries they are payable on the anniversary of the filing date.  Sometimes they are payable shortly afterwards – such as at the end of the month that contains the anniversary.  So far, so simple.  The complication arises when working out which fee is payable, and when.

This is important, as the fees vary with the age of the patent.  The early renewal fees are quite low, but the rise with time.  For example, the UK renewal fees start at £70 and rise to £600 (at 2010 rates).  So it is important to select the right one – send the fee for a previous year and you will not have paid a sufficient amount. 

The confusion over the numbering arises because fees are paid in advance, i.e. at the start of the year for which they are due.  Thus, if there were a “first” renewal fee, it would be for the first year of the patent’s life, and thus due immediately on filing, or the “0th” anniversary.  Likewise, the 5th renewal fee is due on the 4th anniversary, the 6th fee on the 5th anniversary, and so on.  The process ends with the 20th renewal fee, which is due on the 19th anniversary and takes you through to the end of the patent’s life when it expires on the 20th anniversary of the filing date.

The other point to note is the stage at which renewal fees start being payable.  Most countries only charge renewal fees once the patent is granted.  Thus, the UK Intellectual Property Office sets out renewal fees for the 5th to the 20th years, payable on the 4th to the 19th anniversaries because most applications take about 4 years to get to grant.  Generally, when an application is granted, any renewal fees that have already fallen due have to be paid in a “catch-up” process.  Sometimes this is due on grant, sometimes within a set period after grant. 

The European and the Canadian patent offices charge renewal fees on pending applications as well, starting with the 3th year’s fee.  In the case of the European Patent Office, you stop paying renewal fees to the EPO when the patent is granted, and start paying them (instead) to the national offices where the European patent takes efect.  Sometimes, care is needed around the handover date to make sure nothing is missed. 

So, that is how the first renewal fee you pay is the third, at the second year!

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Why Didn’t Einstein Patent E=mc2?

After all, he worked in the Swiss Patent Office, so he would have known about patents and why they were advisable.  So why did he choose not to patent something which he knew would be of huge significance?

Well, the reason is quite simple.  If he understood patent law sufficiently well to realise the value of a patent on such an important concept as E=mc2, then he would also have understood that his idea was not patentable. Current European patent laws exclude a number of areas from patentability, one of which is scientific discoveries. We call the distinction between these unpatentable areas and the rest of technology “inherent patentability”. What this means is that most technology – anything that is outside these areas – is “inherently patentable”, i.e. inventions are patentable unless they are already known or are obvious. Ideas in the excluded fields are “inherently unpatentable”, i.e. a patent cannot be validly granted at all, regardless of whether the idea is new or unobvious.

This usually prompts people to ask how anything can be patentable – after all, at some level all inventions rely on a scientific discovery.  Any electronic invention, for example, relies on the discoveries of Faraday, Volta, Ampère, Maxwell and so on.  The answer lies in the rarely-mentioned proviso to the exclusion of these fields; that is, an invention is only excluded from patentability if it relates to the excluded field “as such”.

So, an invention that relates to a scientific discovery “as such” is excluded.   This means that if the alleged “invention” (in fact it will then be simply an idea or concept, not an invention) is purely a scientific discovery, and nothing else, then it is excluded.  If there is something more to the idea – some way in which a scientific concept is applied in the real world in order to produce a useful effect, for example, then the invention is more than a scientific discovery “as such” and is patentable. 

So, discover that E=mc2, and you do not have a patentable invention. 

Realise that E=mc2 means that the energy released by a fissioning atom will be huge, and could be harnessed, and that therefore radioactive elements can be used to generate power, and you have (or, had, when it was still novel) a patentable invention.

The relevant part of the European Patent Convention is Article 52, which is entitled “Patentable Inventions”, and reads:

(1) European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.

(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

(a) discoveries, scientific theories and mathematical methods;

(b) aesthetic creations;

(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;

(d) presentations of information.

(3) Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.

This is also the route by which software and business methods are excluded from patentability, so the same principles apply to them.  Create a cool software trick, and it will not be patentable.  Use software to create a novel effect in the real world, and your invention is patentable despite the fact that it includes software.

Note: Some historical licence has been taken in the writing of this post, in particular the fact that at the date of Einstein’s work, patent laws were very differently worded and the European Patent Convention was not yet even a twinkle in legislators’ eyes.  The principles set out remain valid, though.  Thank you for bearing with me…
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Does use of a Community trade mark in one Member State constitute genuine use ‘in the Community’?

Short answer: We don’t really know.  The matter has yet to be decided by the Court of Justice.

Long Answer (in Ben’s view): No, because:

1. The preamble to the Council Regulation (EC) No 40/94 states that “legal conditions must be created which enable undertakings to adapt their activities to the scale of the Community whether in manufacturing and distributing goods or in providing services“. By observing that the Community is a large market where undertakings need to adapt to its size (“scale”), the preamble provides a hint that use “in the Community” requires use than in more than one Member State.

2. The preamble to the Council Regulation (EC) No 40/94 also states that “national trade marks continue to be necessary for those undertakings which do not want protection at the Community level”. If use in one Member State is sufficient to uphold a CTM registration, then there is an inherent contradiction between this and the pre-amable to the Council Regulation because national trade marks would not really be necessary at all. Furthermore, the pre-amble acknowledges that there is a difference between registration at the national level and at the Community level; thus there must be a difference between use at the national level (by this I mean use in one Member State) and the Community level.

3. The First Council Directive of 21 December 1988 to approximate the laws of the Member States relating to trade marks (89/104/EEC) states that “whereas in order to reduce the total number of trade marks registered and protected in the Community and, consequently, the number of conflicts which arise between them, it is essential to require that registered trade marks must actually be used or, if not used, be subject to revocation“. The reduction of the number of conflicts is an integral part of trade mark law at the Community level. Therefore, to permit a local trader to have a monopoly right throughout the entire Community on the basis of only localised use appears to go against the spirit of the Directive.

4. Whilst I note the joint statements by the Council and the Commission (of 20.10.1995, No B. 10 to 15, OJ OHIM 1996, 615) relating to use in one Member State, these are not binding and I agree with the BOIP that these statements are incorrect. Articles 15 and Article 50 are silent with respect to the geographical spread of use required; however, Article 108 (2) (a) envisages a scenario whereby a CTM will need to be converted even when proof of genuine use in one Member State has been submitted. Article 108 (2) (a) reads as follows:

2. Conversion shall not take place:

(a) where the rights of the proprietor of the Community trade mark have been revoked on the grounds
of non-use, unless in the Member State for which conversion is requested the Community trade mark
has been put to use which would be considered to be genuine use under the laws of that Member State;”

Thus, the Regulation acknowledges that proof of use in one Member State is not sufficient, but provides an equitable remedy (conversion)  in circumstances where a trader has used his mark in only one Member State.

5. The purpose of Article 108 (2) (a) is to allow conversion where proof of genuine use has been provided for the Member State concerned. That is not to say that the use is not genuine according to European standards, but that it must be genuine according to the standards of the Member State concerned (which are approximated by the Directive in any event). In other words, Article 108 (2) (a) does not say that the use must not be considered genuine at the Community level before the Article has effect.

6. In its opposition guidelines, OHIM states that “It must in any event be underlined that it is the European requirements or standards which must be complied with and not the national standards“.  A situation where the use is not considered genuine by local standards, but genuine by Community/European standards, would lead to a farcical situation where use in one Member State is sufficient to maintain protection throughout the entire Community, but would not be sufficient to uphold a national registration in the Member State concerned. Therefore, assuming I am right about the interpretation of Article 108 (2) (a), the Regulation and OHIM practice says, in effect, the Office can decide that genuine use in one Member State is proven (by European standards), but that such use is not sufficient to uphold a CTM registration. Such a registration may be converted, provided it complies with local use standards.

7. Article 109 (3) provides as follows:

The Office shall check whether the conversion requested fulfils the conditions set out in this

Regulation, in particular Article 108(1), (2), (4), (5) and (6), and paragraph 1 of this Article, together with

the formal conditions laid down in the Implementing Regulation. If these conditions are fulfilled, the

Office shall transmit the request for conversion to the industrial property offices of the Member States

specified therein.

Whether Conversion requirements are met is therefore decided by the Office before the application for conversion is transmitted to the national trade mark office. The Office is only in a position (I believe) to decide whether the proof of use is sufficient for its own purposes (i.e. by its own standards). Any request for conversion under Art. 108 (2) (b) that is transmitted to the local office must have been checked for genuine use by OHIM according to its standards. Thus, if genuine use in one Member State is sufficient to maintain a CTM registration, Article 108 (2) (a) would be redundant under current OHIM practice.

I appreciate that Art. 109 (3) relates to a procedural step and that this reasoning could be side stepped if OHIM is in a position to decide whether use is genuine according to local law/standards.

8. From a common sense perspective, if a CTM proprietor has only used his mark in one Member State in five years, then protection in one Member State is all that is required. Article 108 (2) (a) provides for this and if protection outside of one Member State is required going forward then the proprietor is free to re-file for his Community trade mark

I should perhaps add that I think the ECJ’s decision in Pago (Austria is a substantial part of the territory of the Community) does complicate matters a little; it is difficult to see how genuine use in a “substantial part” of the territory of the Community cannot not be considered genuine use “in the Community”. I guess if one interprets “in the Community ” as “in the Community at large ” that would remove Pago as a problem. Either that or we conclude that the ECJ was wrong to decide that one Member State is a substantial part …”

The above appeared on the IPKat blog (here), in response to the Benelux Office for Intellectual Property’s decision in the Onel case (here) that use of a Community trade mark in one Member State is insufficient to prove genuine use ‘in the Community’.  Also reported by World Trade Mark Review here.

Since that decision, the Hungarian and Danish Trade Mark Offices have issued statements in support of the Benelux Office’s position. See here and here

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Which legislation affecting trade marks is applicable in the United Kingdom?

  1. Trade Marks Act 1994 (here)
  2. The Trade Mark Rules 2008 (2008 No. 1797) (here)
  3. Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (here)
  4. Commission Regulation (EC) No 2868/95 of 13 December 1995 (as amended) – the Implementing Regulation for the Community trade mark (here) See also:
  5. First Council Directive of 21 December 1988 to approximate the laws of the Member States relating to trade marks (here)
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