A patent is a legal right to exclude others from making, importing, licensing, using, and selling an invention in one or more countries. In return for this exclusive right, the invention must be published. A patent application is therefore published 18 months after it is submitted. If a patent has been granted in several countries, this means that the patent holder has the right in these countries to prevent others from commercial exploitation of the invention. Anyone who copies the invention infringes the patent. The holder of the patent has namely a lawful monopoly during the period the patent is maintained. Patents can be searched for physical objects as well as for processes.
Validity period / how long is the patent valid?
A patent is normally granted for 20 years. Under certain circumstances, the patent holder can obtain a supplementary protection of up to five years for registered medicines and plant protection products. The patent holder must pay annual fees to the authorities in the countries where the patent is approved in order for the patent to be valid, and therefore constitute an exclusive right. When the patent lapses, either because the patent holder lets it lapse or because 20 years have passed, the invention is free to use by all interested parties.
Requirements for patentability
The requirements for an invention to be patentable, are:
• that it is new (novelty)
• that it involves an inventive step, which in brief means that the invention must differ substantially from what is previously known
• that it is industrially applicable
Scope of the patent
A patent thus gives the holder a monopoly. The scope of the patent is critical to what the exclusivity covers, and correctly and accurately defining the scope in words is of the utmost importance. Scope, or more precisely the scope of protection, is defined in a patent application by the so-called claims.
A patent application relating to Sweden is submitted to the Swedish Patent and Registration Office (PRV) or to the European Patent Office (EPO) in Munich. Applications are examined not only with regard to formalities, but also with respect to the requirements for patentability. If the invention is patentable, the application is approved as a patent and promulgated. The announcement is made in the Swedish Patent Gazette in Sweden. For a period of nine months afterwards, it is possible for third parties such as competitors to submit objections to the patent. A patent granted in Sweden only applies in Sweden.
For a Swedish invention to be protected nationally in other countries, a patent application should be submitted to the respective country within 12 months of the Swedish filing date. So-called priority is then requested from the Swedish priority application. The foreign application will be given the same filing date as the Swedish patent application. An application may be filed abroad after 12 months but before 18 months, without priority, as long as the invention has not been otherwise disclosed.
Rather than filing national applications in many countries, patent applications can be filed under the European Patent Convention (EPC), either directly to the European Patent Office (EPO) or via PRV in Sweden. This is a simplified and, for more than 3-4 application countries, cheaper procedure. Applications are examined centrally and a granted patent may be invoked in all countries indicated (designated) in the application. EPO's headquarters are located in Munich. Around 4000 people are employed at EPO to examine applications and grant patents. EPO has further offices in The Hague, Berlin and Vienna.
A centralized preliminary novelty search and patentability assessment can be obtained through the Patent Cooperation Treaty (PCT), which has over 100 contracting states.
To ensure that an invention is not already known, it is recommended to carry out a novelty search that provides information about the state of the art at the time the search is performed. A novelty search is also of great help when drafting a patent application.
The skilled person
In the patent setting there is often talk of the “skilled person”. This person represents all of the published knowledge in the technical field to which the invention relates. If it is determined that it is obvious for the "skilled person" to combine information A with information B and thus arrive at the claimed invention, the invention generally lacks an inventive step. The invention therefore does not differ substantially from what is previously known, which, as previously mentioned, is a patentability requirement. In other words, the invention is deemed close to hand for a skilled person, considering the knowledge and capabilities the skilled person is considered to possess.
If you have not checked whether a particular product or a particular process is already patent protected, there is a risk of infringing the rights of others if you yourself begin to manufacture, sell or use the product or process. This can be very costly because you can be sued for infringement. A detailed search to locate existing patent applications and patents that might exist for the product should be performed. Thereafter, the relevant patent applications and patents should be analyzed regarding ownership, scope and geographical coverage.
The annual fees that must be paid in order to maintain the patent are called annuities. The patent lapses automatically if the annuities are not paid.
EQE / European Patent Attorney
A patent attorney having passed the European Qualification Examination (EQE) becomes a European Patent Attorney and may represent applicants, file and prosecute European patent applications before the EPO. Passing the EQE requires a great deal of proficiency.
Permitted parallel importation is where a product is legally imported from a country, and sold for commercial purposes in the importing country, where the product is protected. The problem of parallel imports concerns the issue of whether the rightholder in the importing country has the right to stop another's imports of his/her original goods. Unauthorised parallel importation is when an entity legally buys a product in a country outside the EEA (European Economic Area) and sells it in the EEA without the consent of the rightholder.
The national patent laws, the Patent Cooperation Treaty (PCT) and the European Patent Convention (EPC) are some of the laws and conventions governing the application procedure for patents.
What makes an intellectual property consultancy?
An intellectual property consultancy (formerly often referred to as patent consultancy) helps companies and individuals with the protection and defence of patent, trademark and design rights. The IP consultancy has a comprehensive knowledge of laws and regulations, deadlines in intellectual property, etc.
A Swedish design application relates to Sweden and is filed with the Swedish Patent Office, PRV. With a design registration you protect your product's appearance, but not its function. Also two-dimensional design, ornamentation, can be protected.
To obtain a valid scope of protection, the design has to be new and has an individual character. It should therefore not have been previously exhibited as well give an "informed user" impression that it differs from earlier design. In terms of novelty it is required that the pattern is not shown to the public earlier than 12 months before the application is made.
An application for design protection is made to the patent and registration office. No examination as to novelty and individuality takes place, which means that the applicant and his competitors themselves must guard earlier registrations and to assess for themselves the registration requirements. If the application meets the formal requirements it is registered.
If your application is approved, you will be granted design protection which is valid for a maximum of 25 years. The protection is an exclusive right and prevents others from using it. No one else can manufacture, sell, import or hire a product that infringes your design protection.
There are different routes that you can take to get design protection. The route you choose depends on whether you want to protect your design in Sweden or whether you want protection in other countries too – and if so, which ones. Deciding what to do also depends on what product the protection is for, which countries you want to sell the product in and if you are planning to sell on the exclusive rights to the design or keep them yourself.
A Community design means you can protect your design throughout the EU with just one application. The requirement for obtaining a valid registration is basically the same as the national Swedish registration. If you want to protect your design outside of the EU, you can use the international registration system. The international registration system also makes it possible to protect a design in several countries with just one application. Alternatively, you can apply for protection directly to individual countries with separate applications.
Unregistered design protection
Nowadays you can also get limited design protection without even applying for it. Since 6 March 2002, the Community Designs Regulation has been in force in the EU. The regulation means, among other things, that you can get limited protection for a design without needing to do anything other than make your design public. This form of protection is only valid for three years. If you want longer and more comprehensive protection, you must apply for registered design protection within one year from the date that you made the design public.
Utility models are a simpler form of patent protection where in many countries, though not in Sweden. Protection is typically shorter than for patents and applications utility model reviewed novelty not normally. In German this is known as "gebrauchsmuster" and in English "Utility Model".
Contact persons at Zacco:
Patent and Design related matters, Michael Byström, 08-59887240
Legal and Trademark matters, Malin Thunberg McCann, 08-59887318
Domain Name matters, Isaac Keren, 031-7258135