European Patents and Designs

Where do I start?

European Patents

European Designs

National Routes

UK Patents

UK Designs

Confidentiality

 

Where do I start?

For the option to apply for protection in more than two European countries, the best route is likely to be:

• European patent to obtain patent protection (For a quick file guide, click here.)
• Registered community design to obtain design protection (note this does not cover the UK (see below))

For patent (utility) protection only in UK or only in one European country, the best route is likely to be:

• UK or other national patent and/or design application filed directly before national office of country of interest (See UK Patents, or National Routes for other countries)

European Patents

What is a European Patent?

A single application procedure under the European Patent Convention (EPC) provides for the grant of a single European patent. After grant and following certain formalities, the European patent leads to the grant of a bundle of national patents. You can decide to apply for protection in some or all of the member countries to the EPC. A European patent application can be filed and prosecuted in English.

A European patent gives the patentee the same rights as a national patent in each country for which it is granted. Anyone using the patented invention without the consent of the patentee in those countries designated will generally be infringing the patent.

What can be patented?

A European patent protects the way that a product , machine or process works.

The invention must be:
susceptible of industrial application
new, and
involve an inventive step
In order for an involve an inventive step it must differ sufficiently from what is already known.

For protecting the way a product looks (Design), see Community Registered Design.

European Patent Coverage

Potentially all member countries of the European Patent Convention (EPC). For a list of member countries, click here. Note there are countries in addition to those of the European Union that are members of the EPC.

European Patent Duration

20 years from filing application.

Translations

Yes, upon grant, European patent application claims into French and German. Some countries will also require translation of specification into their official language.

Annual Renewal/Maintenance Fees

Yes, due annually starting after two years of the filing date of the European patent application. Following grant, annual fees due in each country where protection required. Patent will lapse in those countries for which annual fees not paid without affecting patent rights remaining in other countries.

How to get a European Patent

The European Patent Office (EPO) advises all Applicants to seek legal advice. Services of a professional representative, such as myself, are mandatory for applicants residing outside of Europe.

For Free Consultation, click here.
For a Quick File Guide, click here.

A single application can be made in English to the EPO to obtain a European patent. Whilst applications can be filed at the EPO in any language, the official languages of the EPO are English, French and German. If an application is not filed in one of these languages, a translation has to be submitted.

Different routes to a European Patent

• Prepare and file a European patent application for a European patent directly before the European Patent Office
• Prepare and file an International patent application (eg. US, Europe, Japan, etc.) (within 31 months, convert the international application into a European patent application)
• First file a UK or other national patent application (eg. US, UK, Japan, etc.) (within 12 months subsequently file a European patent application relying on the first filed application)
• First file a UK or other national patent application (eg. US, UK, etc.) (with 12 months subsequently file an International patent application relying on the first filed application) [within 31 months of the first filed application convert the international patent application into a European patent application]

We can advise you on the pros and cons of each of these routes.

European Patent Prosecution

The procedure before the European Patent Office can be summarized as follows:

• File European patent application
• Formalities Examination
• Application publication 18 months from filing date or priority date
• Publication confers provisional protection on the invention in states designated in the application but certain states may require for publication of claims translations before national offices
• Search report drawn up including documents which may be relevant to patentability and initial opinion
• Search Report either published with or after application publication
• Within 6 months after Search Report publication, countries must be confirmed and a Request for Examination filed
• Examiner may well raise objections to application in current form
• I work with Applicant/Client to determine how best to overcome objections to the patentability of the invention
• We may construct arguments in support of patentability with application in current form. Otherwise, amend the application to narrow invention and construct arguments based on amended claims.
• Patent grants when Examiner agrees that application complies with all provisions of European Patent Convention
• Grant fees paid and we assist with providing and filing French and German translations of the claims
• Patent granted is a “bundle” of individual national patents
• We assist with providing and filing any translations of text into official languages of countries that may be necessary to validate patent in all designated countries
• Within 9 months of grant, patent may be opposed at the EPO. Many patents are not opposed. I have experience in opposition proceedings and can help you defend against such an opposition.
• Note that once the agreement for the Unified Patent Court enters into force, it will be possible to obtain a European patent with unitary effect (Unitary Patent) for many but not all countries in the European Union. For more information see Unified Patent Court .

Our UK team files and prosecutes European Patent Applications.

European Community Designs

What is a European Community Design?

A community design under the European Community Design Regulation provides uniform protection for designs with uniform effect throughout the entire territory of the European Union. For a list of countries in the European Union, click here.

Community designs can be registered to provide long term absolute protection against use of the design. Unregistered community designs provide short term protection against copying only.

What designs can be protected?

Appearance of the whole or part of a product. A product means any industrial or handcraft item, including parts of a more complex product, packaging, get-up, graphic symbols and typographic interfaces.

Design must be:
Novel – differ by more than immaterial details from known designs
Have Individual Character – produce a different overall impression on the informed user (usually end user)

Community Design Coverage

The regulation applies to all of the European Union (EU) and includes Austria, Belgium, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Luxembourg, The Netherlands, Portugal, Spain, Sweden.  For a full list of member states, click here.

For Design protection outside of the EU see Worldwide Design Protection.

Note that the United Kingdom is not longer part of the EU and a European community design no longer covers the UK. Separate design protection in the UK, a separate UK design must be filed before the UKIPO.  Our UK team files and prosecutes UK design applications

Community Design Duration

• Unregistered Community Design – limited, short term protection (3 years from publication in EU)
• Registered Community Design – long term protection (upto 25 years)

Renewal Fees

• Unregistered Community Design – No
• Registered Community Design – Yes, for five year periods upto maximum 25 years total

How to get a European Community Design

Unregistered Community Design

Protection obtained without formalities provided unregistered design meets novelty and individual character. Documentary evidence relating to making of the design should be kept in case the unregistered design has to be enforced.

Registered Community Design

A single community design application can be filed in English at the Office for the European Union Intellectual Property Office (EUIPO), formerly known as the Office of Harmonization in the Internal Market (OHIM). This is an EU organisation that is responsible for granted Registered Community Designs and Trade Marks.

Our EU team files and prosecutes community design applications.

The major advantage of a Community Design application is that it can be much more cost effective than filing and prosecuting several national applications. It is also possible to include multiple designs in one application subject to reduced official fees so that alternatives and prototypes can be included in the application in case they are chosen for commercialization.

Different routes to a European Community Registered Design

• Prepare and file a European Community Registered Design from the outset
• First file a UK or other national design application (eg. US, Japanese etc.)
  (within 6 months subsequently file a European Community Registered Design application relying on the first filed design application)

Grace Period

A design that has been disclosed to the public by the designer or in consequence of a disclosure made by the designer does not prevent obtaining protection provided the application for the community design is filed within 12 months of the first design disclosure.

Note that, where at all possible, an application for a community design should be filed before disclosing your design. Disclosing your design to the public can jeopardize design protection elsewhere. Furthermore, disclosures made independently of the designer will be considered for purpose of assessing novelty and individual character. It is best to file as soon as possible in case someone else files a similar design.

Prosecution

Compared to patents, prosecution of the community design application is very straightforward. There is no official search or novelty examination but a formality examination is conducted. Publication occurs within 3 months of filing but can be deferred upto a maximum of 30 months from filing or priority date.

Declaration of Invalidity

It is possible to challenge a community design registration on a number of grounds by applying to OHIM.

 

European National Routes

Patent and Design protection can be secured by filing separate national applications in countries of interest. Filing national patent applications can become very expensive due to the need to retain separate associate law firms in each country and translation costs. I have experience in handling filing and prosecution of applications in UK, Germany, France, Italy, Spain and other European countries. I am familiar with associates throughout Europe many of whom I have met in person.

Note that some countries also additional offer Utility model protection. Utility model protection is similar to regular patents but protection is afforded for only between 6 to 10 years depending on the country and renewal fees are generally due on expiry of a three to five year protection period.

 

UK Patents

What is a UK Patent?

A UK Patent is granted by the UK Intellectual Property Office for an invention. A patent owner has the exclusive right to use the invention and can take action against those using the invention in UK without permission of the patent owner. Anyone using the patent invention in UK without consent of the patentee will generally be infringing the patent.

What can be patented?

A UK patent protects the way that a product , machine or process works. It does not protect the way an article looks (see UK Registered Design for protecting the way an article looks).

The invention must be

• capable of being made or used in industry
• new, and
• involve an inventive step

In order for an invention to potentially involve an inventive step it must differ sufficiently from what is already known.

UK Coverage

United Kingdom of Great Britain and Northern Island. Great Britain is England, Wales and Scotland in combination.

UK Patent Duration

20 years from filing

Annual Renewal/Maintenance Fees

Yes, following grant, annual renewal fees due. Patent will lapse if renewal fee not paid.

Renewable

No.

How to get a UK Patent?

Different routes to a UK patent

• Prepare, file and prosecute UK patent application directly before UK Intellectual Property Office
• Prepare, file and prosecute a European patent application directly before European Patent Office (Validate granted European patent in UK)
• Prepare, file and prosecute an International patent application (UK, US, Japan etc.) [within 31 months convert the International application into a UK patent application and/or European patent application (see above)

Our UK team files and prosecutes UK patent applications, European Patent Applications and International patent applications.

We can advise you on the pros and cons of each route.

UK Patent Prosecution Procedure

A regular UK patent application contains your name and address, request for grant, description of the invention (preferably with drawings), claims, abstract and a request for search.

A provisional application may be first filed without the claims, abstract and request for search. Within 12 months, the claims, abstract and request for search must be filed. Provisional applications are useful in certain circumstances such as where publication or sale of the invention is immanent and unavoidable and there is simply no time to prepare a complete application beforehand. This will ensure that the published matter is predated by the provisional application.

Application process can be outlined as follows:

• Application Filed
• Formalities Examination and Filing Date Accorded
• Search Report drawn up including documents which may be relevant to patentability and indication of patentability
• Application publication 18 months from filing date or priority date if the application claims priority
• Publication confers provisional protection on the invention in UK
• Within 6 months after Search Report publication, file Examination request
• Examiner may well raise objections to the application in current form
• I work with Applicant/Client to determine how best to overcome objections to the patentability of the invention
• We may construct arguments in support of patentability with application in current form. Otherwise, amend the application to narrow invention and construct arguments based on amended claims.
• Patent grants when Examiner agrees that application complies with UK Patent Act
• Grant Fees are paid and Patent Published

 

UK Registered Design

What is a UK Registered Design

A UK registered design can be used to protect the way your article/product looks. It is a right to prevent others from using the registered design. This is an absolute right in that it applies even if the design has been independently created by others rather than copied. This is in contrast to UK unregistered design which can subsist automatically without registration but which is limited to preventing use of designs that have been copied.

What can be protected?

Appearance of whole or part of a product (inside and out). This may result from lines, contours, colours, shape, texture, material and/or ornamentation of your product. Computer icons, typefaces and other graphical symbols are also protectable.

The design must be

• novel (differ from prior designs by more than immaterial details); and
• poses individual character (produce different overall impression on informed user (eg. and user)

Note that disclosures that could not have become known in the European Economic Area in the business sector concerned are not considered for purpose of assessing novelty and individual character.

Protection limitations

• component parts/spare parts of complex products only registrable if remain visible during normal use of the complex product
• use of component part to repair complex product to restore to original appearance cannot be stopped
• cannot protect features which are soley dictated by the product’s technical function or required to permit product to connect to or with another product so either product can perform its function
• cannot register designs which incorporate protected emblems or third parties trademarks of copyright material

Grace Period

A design that has been disclosed to the public by the designer or in consequence of a disclosure made by the designer will not prevent obtaining a registered design provided the application for the registered design is filed within 12 months of the first design disclosure.

Note that, where at all possible, an application for a registered design should be filed before disclosing your design. Disclosing your design to the public can jeopardize design protection elsewhere. Furthermore, disclosures made independently of the designer will be considered for purpose of assessing novelty and individual character. It is best to file as soon as possible in case someone else files a similar design.

UK Registered Design Coverage

United Kingdom of Great Britain and Northern Island. Great Britain is England, Wales and Scotland in combination.

UK Registered Design Duration

Upto 25 years. Must be renewed at five year intervals.

Annual Renewal/Maintenance Fees

Yes, following grant, at five year intervals. Registered design will lapse if renewal fee not paid.

How to get a UK Registered Design

File an application at the UK Intellectual Property Office. Application includes design drawings showing all features of the design.

Multiple Designs
Multiple designs can be filed in a multiple application to reduce costs.

Publication
UK registered design is published upon registration but registration and publication can be deferred by up to 12 months from the application filing date.

Invalidity
Applications for invalidity may be filed once the design is registered. This may be based on lack of novelty, individual character or entitlement to the design.