Something new happened today in my 35 year career,
It is a fact of life that, when working as a patent attorney preparing patent specifications, you may make an inventive contribution as one thinks about how to define an invention and new possibilities come to mind. I am sure that this has happened on many occasions to my patent attorney colleagues around the world. Often those contributions are not formally recognised - it often is just part of the job. However, today I was named as an inventor in a published PCT application filed for a client, and I thought it worth marking with a blog post.
I think it is worth mentioning that inventorship is something which should be carefully considered when preparing a patent application. A rule of thumb is to regard an inventor as being someone who devised an invention - or an aspect of an invention. Accordingly, there may be a single inventor or several inventors. Particular care should taken if a patent application may be filed in countries such as the US where naming or misnaming inventors may have significant consequences.
The European Patent Office's patent information system ESPACENET has been a great free resource for many years now. I regularly recommend it to clients, and when talking about IP for people looking for patent information to drive innovation. In many cases, you can quickly see if an idea is already known or not.
The EPO has just released a major update of the system and it's now even better and worth having a look at! Please take a look at:
EU trade mark registrations will still be possible for UK companies after BREXIT.
The UK rights in existing EU registrations will become separate UK national registrations after BREXIT under a new registration number, and will require separate renewal payments. I have been busy setting up cases for those new UK national registrations for current clients to compliment their EU registrations.
Design Right is a UK innovation in IP protection which has subsequently been adopted in EU law. Briefly it automatically protects the three-dimensional product and component design based on original design documents. For the UK, it replaced the extension of copyright in design drawings to cover products made in accordance with those drawings.
Design right can last up to 15 years in the UK, less in the EU. Bear in mind that, in contrast, a registered design can be kept in force for up to 25 years in UK or EU albeit at relatively low cost.
Two notes of caution:
First, copying needs to be established.
Second, a designer needs to be able to prove the origin of the design, by producing design documents, and should mark a product and or its literature to indicate that design rights exists e.g "Design Right SUPER COMPANY 2018".
Following last year's quick heads-up (https://www.jdip.co/blog/category/brexit ), we learnt this week that agreement in principle has been reached with the EU on the UK remaining in the EU trade mark and design systems until the end of 2020. Furthermore, and as expected, existing EU registrations will be converted to UK national registrations. We all hope that this process will be free and automatic, but this is still to be decided. A nine-month conversion period will be allowed for EU trade mark and design applications which are still pending at the end of 2020 to become the basis for new UK national applications.
One area of IP law that can catch companies out is in relation to making an unintentional threat to sue for infringement of IP, when only seeking to notify a third party about the IP. The law protects third parties, and especially third party's customers from unjustified threats. One of the downsides, of UK law is that an IP attorney instructed to communicate with a client's competitor over IP infringement, could find themselves on the wrong side of a counterclaim for making unjustified threats - which would then leave the attorney conflicted and unable to act further for their own client. This has tended to result in unclear communications.
I am pleased to report that on Sunday, UK law was improved to mitigate such issues, and to bring the law in relation to trade marks and designs into line with that for patents. These changes should make it easier for all to be able to notify third parties of the existence of IP rights and, when appropriate, for a sensible negotiations to take place. The issue of unjustified threats is not just one for UK law, and should be kept in mind when communicating with competitors in other countries.
As part of its role in raising awareness of good IP practice, the European Patent Office has recently prepared some very good case studies on company IP portfolios. Based on my experience, I particularly like this one on the Irish company Aerogen, which has aerosol drug delivery technology, and I recommend it to mid-size companies, and ambitious small companies`:
The case study explains that Aerogen has 14 patent families, other IP is not covered in detail.
Features of the case study that particularly resonated with me, based on similar situations, included:
I am frequently asked about the effect of the forthcoming Brexit on IP. IP is an important aspect of modern business and a significant aspect of the current UK/EU negotiations on Brexit. Luckily, the UK has an excellent, experienced team at the UKIPO guiding ministers on IP topics in those negotiations. Here's the need to know stuff.
Patents -little changes on Brexit. The "European" patent system has nothing to do the EU - it's been an example of successful wider European cooperation for the last forty years. So a "European" patent application can still result in protection in the UK after Brexit.
Trade Marks and Designs. In contrast to patents, there are EU systems for trade mark and design registrations. The main issue will be what effect will EU registrations have in the UK after Brexit. Most suspect that existing registrations will be allowed to be converted into UK national registrations. Use of trade marks in the EU should be assessed, as this may affect strategy..
Other rights like Supplementary Protection Certificates, Design Right, plant varieties and copyright will be affected in different ways. Please let me know if you want an update on a specific area.
I have worked over the years with several highly skilled professional patent searchers. For a really important patentability or freedom to operate analysis their skills are invaluable. However, looking for patent publications at a high level is so easy to do and really worthwhile if you want to see how other people have tried to solve the technical challenge that your business is facing. There's no point reinventing the wheel. My recommendation is to look at the European Patent Office's EspaceNet service. It is simple and free to use. Just put a variety of relevant abstract terms in, remembering that one person's "car' is another person's "automobile". Looking at title terms is often not useful because patent attorneys often use fairly bland titles for their client's patent applications. The EPO has just extended these full-text searches to look for terms used in the description and claims. If you are really interested in using this free search tool then work out the International Patent Classification (IPC) or Co-operative Patent Classification code for your technology and use those codes in your searches. The built in help shows you how to do this.
You can find EspaceNet at: worldwide.espacenet.com
Trade secrets are as old as the hills, and can be very important assets for a business. I believe that they will become increasingly important through current major legislative changes in the EU and US.
Many companies do not know what trade secrets they have within their organisation, who is responsible internally for the trade secrets, or their value for the business. The legislative changes will surely require organisations to take better care of their assets.
In this connection, I have been impressed by the trade secret management tools of Chawton Innovation Services as a way of keeping much better track on a company's assets, and would be happy to discuss these tools further or to make an introduction.