Intellectual property rights are territorial rights, meaning that the protection afforded by a granted patent or a registered trademark is geographically limited.
Many companies that protect their inventions, brands or product designs in their home country, do not realise that this does not give them automatic protection in other countries.
Unfortunately, this means that many businesses don’t get protection for their brands and/or technology in other (commercially important) countries.
Regardless of whether you are interested in seeking patent protection for a new invention, trademark protection for a product name/logo or registered design protection for the appearance of a product, you will need to protect your rights both at home and abroad.
With this in mind, here are some key considerations for how to protect your IP rights in Europe.
Research the market
Whilst you may have IP rights in one country, in other countries there may be brands or products which have registered IP that could be used to stop you from trading there.
For trademarks, perform a search to check to see whether your brand has already been registered in countries you want to commercialise in.
For inventions, if you have already filed a patent application in one territory, such as the UK, check the deadline by which you must file the patent application in other territories. This is a year from the date of first filing. Also, get the patent office to do a search on your patent application to see what other relevant technology is out there. This can take several months, so ensure that the search request is submitted as soon as possible.
To avoid a costly lawsuit, make sure you research the market and its IP Registers to ensure your brands and products will not infringe on other companies’ rights.
Think strategically and review regularly
Companies should ensure that they apply for patent protection for their inventions in all territories which will be commercially relevant to them.
The potential monopoly provided by patent protection is the only effective way to prevent others from exploiting your inventions and receiving a good return on the initial investment.
Equally, it is extremely important for biosciences companies to protect their brands with registered trademarks. When a granted patent expires, brand names (e.g. Nurofen®) are crucial in maintaining a competitive edge over generic manufacturers when the market may become diluted.
If you do not take action to protect your rights, it can be the case that unscrupulous third parties will apply to register it themselves. If that happens, it can be extremely costly and difficult to resolve the problems.
You also need to remember that as your business develops and grows, your IP requirements may change as a result. You should regularly review your IP protection to ensure it fits in with your ongoing business goals and strategy.
Remember R&D Tax Credits and Patent Box
The UK government has an excellent R&D tax credit scheme which reimburses innovators for their R&D expenditure – talk to your advisors to see how you can take advantage of this. Similarly, there is also a “Patent Box” scheme that reduces the corporate tax rate on profits from patented technology (and this can be internal processes as well as products that you can sell to customers). It can, for example, be worth getting a narrow UK patent granted quickly which is focused on a specific product/method and for the sole purpose of the Patent Box scheme whilst also seeking much broader patents with the aim of obtaining a commercial monopoly over the broader technology and innovation.
To help encourage cost efficiency, countries in various parts of the world have formed regional patent systems.
The European Patent Convention is one example, and allows you to obtain a single European patent, giving you access to protection in almost 40 European countries, plus an increasing number of other non-European states that are cooperating with the European Patent Office. Once a European patent has been granted, it can be brought into force in the individual countries that you want the patent to have effect. The European patent will then have the same effect (and be subject to the same conditions as) a national patent granted in that country.
Be aware of timescales
Obtaining a patent can be an altogether more difficult and lengthy process than registering a trademark or a design. It is difficult to put a number to the duration of the patent application process as it varies hugely depending on the territory in which you have applied for the patent and also depending on the subject-matter of the patent application and the invention disclosed.
Assuming that the invention is patentable, in Europe, the application process can take a couple of years. It is also not unheard of for patent applications to take a lot longer than this to proceed to grant. However, it is also possible to speed things up significantly by working with the examiner and the system by being proactive with prosecution, waiving unnecessary periods where the patent application is effectively on hold, and requesting acceleration, and having telephone interviews with examiners.
Be mindful of the impact of Brexit
The first thing to say is that there is nothing to worry about with patents. European patents are governed by the European Patent Convention which is nothing to do with the EU. Therefore, they are not affected at all by Brexit.
Trademarks and designs are another matter, however. EU trademarks and EU designs are both governed by EU law, and so will be affected by Brexit.
As things stand, UK attorneys and lawyers will not in general be entitled to handle EU trademark and design matters after 29th March 2019.
However, by virtue of its membership of the AIPEX European Alliance, Wynne-Jones IP is uniquely positioned to continue to handle EU work.
Brexit presents challenges for many thousands of UK businesses, some of whom haven’t even realised it yet. But, with access to an IP pan-European law firm with expertise in all sectors across all EU states, they can turn that challenge into an opportunity.