Natalia Vadimivna Lemeshchuk, lawyer, patent attorney of Ukraine
Published: Bulletin of the Odessa Bar Association, 2015, No. 4
Attention! The information contained in this article may change due to changes in national or international legislation!
One of the most common mistakes made by applicants who are new to design patenting or brand registration is their desire to obtain a “world patent” or trademark registration “worldwide” with a single application. Unfortunately, such an opportunity does not exist, since the territorial principle of patenting/registration of industrial property objects operates in the field of intellectual property, which means that legal protection is provided only in the state on whose territory the corresponding protection document, patent or certificate, is issued.
At the same time, over the past decades, the world community has done a lot to make it easier for applicants to protect intellectual property objects abroad, to reduce the cost of obtaining rights to them and, in many cases, to further maintain their validity. As a result, in addition to the national principle of registration and protection, established by the Paris Convention for the Protection of Industrial Property back in 1883, regional and international protection systems were created, with unified requirements for application documents and the registration procedure, which to a greater or lesser extent resolves the issue of territorial protection limitations.
In the framework of this article, we will briefly dwell on all three known systems and try to analyze their attractiveness for Ukrainian applicants. For convenience, we will successively consider these systems for the most sought-after objects of industrial property – trademarks, industrial designs and inventions (utility models).
1. National security system
Article 4 of the Paris Convention on the Protection of Industrial Property (hereinafter – the “Paris Convention”), which has been in effect for Ukraine since 1991, provides a “national regime” of protection, which means that foreign citizens of the countries participating in the Paris Convention have the same protection of industrial property rights, as well as own citizens of one or another country. This norm also establishes the right of priority – the so-called “conventional priority” – which means the right of a foreign applicant to request protection in one or more participating countries, while keeping the date of filing the application in his country, provided that the application in the participating country of Paris Convention is submitted within six months – for trademarks and industrial designs, and twelve months – for inventions and utility models.
Today, 176 states and regional organizations are members of the Paris Convention, which enables Ukrainian applicants to request protection in almost any territory of the world. In case of successful registration, the applicant receives a security document (patent or certificate), which, in accordance with the territorial principle, confirms the legal protection of the object in this state. The terms and conditions of the protection document are regulated by the Paris Convention and the legislation of the country in which the protection was obtained.
The cost of patenting/registration includes the fees established by the patent office of the respective state, as well as the services of a national representative, whose participation is usually mandatory. In some countries, the patenting/registration procedure can be carried out directly by the foreign applicant. Thus, in accordance with the Agreement between the Government of Ukraine and the Government of the Russian Federation on cooperation in the field of industrial property protection of 30.06.1993, applicants and patent attorneys of both countries can directly conduct cases in patent offices, when submitting applications for the issuance of security documents, obtaining security documents and maintaining their validity. A similar provision is contained in the Agreement between the Government of Ukraine and the Government of the Republic of Belarus on cooperation in the field of industrial property protection dated October 20, 1993. According to US law, the mandatory participation of a representative is not required for the registration of trademarks and for obtaining patents, if the applicant is an individual. In the USA and South Africa, there is also a procedure for filing an inexpensive preliminary patent application (provisional application), which can be carried out without the involvement of a professional representative and allows the applicant to establish priority for his development; within 12 months, a final application must be submitted on the basis of the preliminary application, while in South Africa the final application is submitted with the participation of a patent attorney. However, as practice shows, the possibility of not involving a specialist is sometimes to the detriment, and not to the benefit of the applicants, since an incorrectly completed application cannot always be corrected at the next stages of paperwork; moreover, it is impossible to make any substantive changes after the decision to issue a security document has been made.
The national registration system remains relevant for the applicant if he intends to obtain protection of an object of industrial property on the territory of one or two states. For example, some Ukrainian applicants may be interested in object protection only in the Russian Federation and the Republic of Belarus, except for Ukraine, or only in Poland. In this case, obtaining protection directly in the country in which the applicant is interested, according to the rules of the Paris Convention, may be justified. This system of protection is also used in cases where the countries of interest to the applicant have not joined the systems of regional or international protection, when PCT applications are transferred to the national phase and in case of refusal by the European office to register a single Community Trademark, which will be discussed further.
2. Regional systems of registration and protection
The regional system envisages the unification of several states with the aim of creating a single system of providing legal protection to objects of industrial property; it also provides for the creation of a single department that ensures the reception, consideration of applications and issuance of security documents.
Today there are five regional organizations operating on the basis of the principles of registration and protection of industrial property objects that are uniform for several countries:
– European Patent Organization, which ensures the issuance and protection of European patents for inventions (European (Unitary) patent);
– the European Community of Trademarks and Industrial Designs, which ensures the registration of Community trade marks and Community designs;
– Eurasian Patent Organization, which unites the CIS countries and ensures the issuance and protection of Eurasian patents for inventions;
– African Intellectual Property Organization, which unites the French-speaking countries of Africa for the purpose of registration and protection of inventions, industrial designs and trademarks;
– The African Regional Organization of Industrial Property, which unites most of the English-speaking countries of Africa and ensures the registration and protection of inventions and industrial designs.
Due to a number of objective reasons, our applicants are currently interested in the systems operating in the European Union, so let’s dwell on them in a little more detail.
2.1. European patent
The European Patent Organization was created on the basis of the European Patent Convention, which was adopted in 1977; today, the organization unites 38 European states, including countries that are not members of the European Union (for example, Norway, Switzerland, Turkey). The headquarters of the European Patent Office is located in Munich (Germany).
The application is submitted in English, French or German, for Ukrainian applicants – with the mandatory participation of a representative certified by the European Patent Office. Applications are accepted in Munich, Berlin and The Hague. An electronic application form is also provided, under such circumstances the application fee is almost halved. The application is subject to a formal examination, patent search, publication and substantive examination, after which the department may make a decision to issue a European patent. Within three months after obtaining a patent, it is necessary to carry out a procedure for its confirmation (validation) in the member states of the European Patent Convention, which are of interest to the applicant, for which it is necessary to contact the patent attorneys of the relevant countries.
The term of protection granted by the patent is 20 years, which are counted from the date of filing the application.
Obtaining a European patent has both its advantages and disadvantages. The advantages, first of all, should include:
– significant cost savings when submitting a single application in one language, with the participation of one representative, and paying a single fee compared to submitting applications in each European country of interest to the applicant (today, the amount of the fee paid when submitting an application is from 1 650 euros and above, and depends on the scope of the application and some other circumstances);
– in case of receiving a negative search report, the applicant has the option to refuse the further patenting procedure and not to pay the examination fee;
– the procedure of the European Patent Office allows the applicant, depending on his plans, to a certain extent to influence the terms of obtaining a patent due to the period of publication of the application, the period for submitting a request for examination and the period for paying fees for issuing a patent (the period for obtaining a patent can be from 3 up to 5 years).
The main disadvantages include:
– the European Office conducts a fairly strict examination, according to the protectionability criteria established for inventions, therefore, the applicant must be sure not only of the novelty, but also of the inventiveness level (non-obviousness) of his technical development or technology, otherwise the money may turn out to be wasted;
– the obtained patent should be confirmed (validated) in the member states of the European Patent Convention, which may lead to significant costs for payment of national fees and services of national patent attorneys, payment of translation of published materials into the relevant state language;
– patent maintenance fees are also paid separately in each state in which the patent was validated, which entails additional costs.
Ukrainian applicants should remember that the submission of a European patent application must be preceded by the submission of an application to the national patent office (Ukrpatent), in accordance with Art. 37 of the Law of Ukraine “On Protection of Rights to Inventions and Utility Models”.
2.2. Community industrial design
The Office for Harmonization in the Internal Market, located in Alicante (Spain), is the agency that ensures the granting of rights to industrial designs in the territory of the European Union. According to the procedure established by this agency, the applicant can obtain protection in all member states of the European Union. Today there are 27 European countries. An application for registration of a Community industrial design is submitted directly to the Office for Harmonization. The applicant can be a person who lives/stays in the territory of the European Union or in the territory of any of the countries participating in the Paris Convention. For Ukrainian applicants who want to use this procedure, the participation of a European patent attorney certified by the department is necessary.
A patent for an industrial design of the Community provides product protection for 5 years, with the possibility of its extension several times, up to 25 years in total.
If the owner of the industrial design has already started or plans to conduct its activities in the territory of several countries of the European Union, this procedure has undoubted advantages:
– submission of a single application in one of the five European languages allows to obtain protection at once in all the countries of the European Union, which significantly saves the applicant’s money;
– a single fee of 350 euros is paid for registration, namely, the filing fee is 230 euros; fee for publication – 120 euros (this fee is indicated for the registration of one industrial design);
– the standard term of registration is about 1.5 months; at the same time, the procedure allows submitting requests for a significant postponement of publication, which may be of interest to the applicant for commercial reasons;
– the provided legal protection is automatically extended to all new EU members without the need for the applicant to take any legal action in the event of the accession of new states to the EU.
Risks/disadvantages for the applicant:
– The Office for Harmonization conducts only a formal examination of an application for registration of an industrial design of the European Union, an examination for novelty and originality is not conducted. In order not to face significant costs and compensations related to the violation of the rights of third parties, the applicant must conduct a preliminary patent information search and make sure that his product is really new and original;
– drawing up and submitting an application for an industrial design directly to the Office for Harmonization requires the participation of a European patent attorney for applicants who do not live in EU countries. However, if the registration of the industrial design of the Community is carried out as part of the international registration under the Hague system (see below), then in this case the applicant can interact with the patent attorney of his country.
2.3. Community trade mark
The registration of Community trade marks, as well as the registration of industrial designs of the Community, is carried out by the Harmonization Office in Alicante. Similarly, the Ukrainian applicant has the right to submit applications, since he lives (or conducts business) in a country participating in the Paris Convention, provided that a certified European patent attorney is involved.
A trademark is registered for 10 years, the specified term can be extended for a 10-year period an unlimited number of times.
Advantages of this registration procedure:
– submission of a single application in one of the five European languages allows to obtain protection at once in all 27 countries of the European Union, with automatic extension of protection to all new EU members;
– the application does not require prior national registration or national submission, as provided by the Madrid system (see below);
– a single application fee is paid, which amounts to 900 euros, if no more than three classes of the International Classification of Goods and Services are applied for, + 150 euros for each class over three;
– the standard term of registration is about 8 months;
Risks / disadvantages of this system for the applicant:
– if the registration of a trademark was refused in at least one of the countries of the European Union, this entails an automatic refusal of registration in all countries of the European Union. However, the applicant is given the opportunity to convert the application according to the national procedure in those countries of the European Union where no objection to registration was filed;
– registration and submission of the application by the Ukrainian applicant directly to the Office for Harmonization of the Internal Market, as well as further administration of the application, is carried out only with the participation of a European patent attorney. At the same time, the Community trademark can be registered under the Madrid system, which will allow interaction with the Ukrainian attorney.
3. International systems of registration and protection
Such systems are based on international agreements, the participants of which can be various states located on different continents, regardless of whether these states are members of regional agreements. Moreover, the regional organizations listed in section 2 of this article are also parties to one or more agreements that define international protection systems. These agreements are administered by the World Intellectual Property Organization – WIPO in Geneva (Switzerland); the WIPO International Bureau is located there itself, where all applications submitted within the framework of the international protection system are received.
For ease of understanding, we list the described international systems and the treaties establishing them in the table:
Table 1
Conditional
system name
Objects
Name of the agreement Year and city of conclusion Year
entry into force for Ukraine
The Hague System Industry
samples The Hague Agreement on the International Protection of Industrial Designs
The Hague Act
Geneva Act 1925, The Hague
1960, The Hague
1999, Geneva
2002
2003
Madrid System Trademarks Madrid Agreement on the International Registration of Marks
Protocol to the Madrid Agreement on the International Registration of Marks 1891, Madrid
1989, Madrid 1991
2000
System
PCT Inventions Patent Cooperation Treaty (PCT)
1971, Washington 1991
The listed international treaties establish a minimum of formalities that are the same for all its participants, which allows you to request protection in many countries and regions. An undoubted advantage of such international protection systems is the possibility for the applicant, interacting only with the attorney of his country, to submit one application and pay all the necessary fees once, at the stage of submitting the application.
We will briefly consider the mechanisms of registration and protection of objects within the framework of these systems.
3.1. The Hague system
According to the procedure of the Hague system, a Ukrainian applicant can submit an international application in English or French directly to the WIPO International Bureau, which registers the received application and sends its copies to the patent offices of the countries (or regional associations) specified by the applicant. Within the established period, the patent offices of these countries have the right to refuse to recognize the international registration. If such a refusal does not come, then the industrial design is considered registered in the territory of the state indicated by the applicant. International registration of industrial designs is valid for 5 years, with the possibility of several extensions for another 5 years, for a total term of up to 15 years (for some countries – up to 25 years).
There are currently 65 countries and regional organizations participating in the Hague Security System.
Advantages:
– the applicant can submit one application in English or French in more than 60 countries, including the European Union, which is a member of this system, without involving registered European attorneys and patent attorneys of the countries specified in the application;
– the fee is paid once upon submission of the application; the basic fee for filing an application for one industrial design is 397 Swiss francs + 167 Swiss francs for the publication of an image + an average of 60 Swiss francs for specifying each country in which the applicant wishes to obtain protection (unless that country has set individual, higher fees);
– the procedure of the Hague system allows to register several industrial designs within the framework of one application, provided that these industrial designs belong to the same class of the International Classification of Industrial Designs;
– the protection of industrial designs granted under the Hague system is identical to the protection granted under the national registration procedure.
Disadvantages of this system:
– countries such as Canada, China, India, Australia, the Russian Federation, the Republic of Belarus, Kazakhstan, and Latin American countries have not yet joined the Hague Agreement. If the applicant (owner) of an industrial design is interested in its patenting on the territory of the specified states, he should resort to the national procedure.
3.2. Madrid system
According to the procedure of the Madrid system, Ukrainian applicants submit one international application through the national patent office of our country, which then forwards this application to the WIPO International Bureau (Geneva). The International Bureau registers and publishes the received application and sends its copies to the patent offices of the countries indicated by the applicant. A prerequisite for this procedure is the registration of the trademark in the country of origin, the so-called basic registration, or at least the submission of an application for registration in the country of origin of the trademark, the so-called basic application. International trademark registration is valid for 10 years, with the possibility of an unlimited number of extensions for another 10 years.
There are currently 97 states and regional organizations participating in the Madrid Security System.
Advantages of the Madrid system:
– the applicant can submit one application in English or French in almost a hundred countries of the world, including the European Union, which is a member of this system, without the involvement of national attorneys, and receive protection identical to the protection provided by the national registration procedure;
– the fee is paid once upon submission of the application; the basic fee is 653 Swiss francs for a trademark applied for in black and white or 903 Swiss francs for a trademark applied for in color + 100 Swiss francs for each country in which the applicant wishes to obtain protection ( if the indicated country has not established individual, higher fees) + 100 Swiss francs for each class of the International Classification of Goods and Services over three;
– as a result of the clearly established deadlines for consideration of applications by patent offices and on the condition of timely payment of the fee, the applicant receives information about the protection of his trademark in the countries indicated by him (or about the previous refusal of protection) in about a year, which is not always possible according to the procedure of national registrations. So, for example, the term of trademark registration in the Russian Federation, the Republic of Belarus, and the Republic of Kazakhstan can last from one and a half to three years;
– in the future, the international registration can be territorially expanded by submitting applications indicating other states that were not indicated by the applicant from the very beginning.
However, this protection system has certain risks and disadvantages for the applicant:
– dependence on national registration for 5 years – international registration is canceled if the basic registration was terminated or the basic application was rejected in the country of origin (for example, trademark registration was refused in the applicant’s country or the registration made there was recognized as invalid);
– the list of member states of the Madrid system is smaller than the list of member states of the Paris Convention. For example, Canada, the United Arab Emirates, and most Latin American countries are not members of the Madrid system; protection in these countries must be obtained through a national procedure in each individual state.
3.3. PCT system
The mechanism of patent protection based on the PCT Treaty is significantly different from the international system of protection of industrial designs and trademarks: if a single application is submitted under the Hague and Madrid systems, on the basis of which registration of the object is carried out and protection is granted in the states specified in the application, then in within the framework of the PCT system, only the filing of a patent application is possible, the further procedure is carried out directly in the state or region of interest to the applicant. Based on this, the patenting procedure under the PCT Treaty is traditionally divided into “international” and “national” phases.
Schematically, it happens as follows: no later than 12 months from the date of submission of the national (priority) application, the Applicant submits a PCT patent application through the patent office of his country or directly to the International Bureau of WIPO, where the date of submission of the application is set, an international search is conducted by a competent search authority and the application is published together with the results of the international search. At the request of the applicant, the authorized search body may also conduct an international examination. At the request of the applicant, the authorized search body may also conduct an international preliminary examination. An international application is considered to have been submitted to all states and regional organizations that are parties to the PCT Treaty.
The international phase ends after 30 months (in some countries – after 31 months) from the date of filing of the priority application, before the end of which the applicant must move to the national phase, i.e. submit, usually with the participation of a national attorney, a PCT application to the patent offices of countries/organizations that he is interested, with a translation into the working language of the department, in accordance with the prescriptions established there and payment of the prescribed patent fees. Further examination of the patent application and the procedure for issuing a security document are carried out in full accordance with the legislation of the state (organization) to which the application is submitted.
For Ukrainian applicants, the languages of the PCT application are Russian or English, correspondence between the applicant and the national office and the International Bureau is carried out in these languages; international search bodies – the Federal Institute of Intellectual Property (Rospatent) or the European Patent Office (EPO). When applying for a PCT, it is necessary to pay an application fee and an international search fee, which depends on the international search authority chosen by the applicant.
We can be proud that starting from February 16, 2016, Ukrpatent becomes the 20th agency in the world competent to conduct international search and international preliminary examination for PCT applications, which, in certain cases, is not only convenient for our applicants, but also significantly raises the image of the state in the world system of intellectual property.
Having very briefly considered the rather difficult procedure for the protection of inventions under the PCT Treaty, we will try to analyze its advantages and answer the question why, with all its complexity and, in a certain sense, half-heartedness (because the applicant never receives the coveted “world patent”), it nevertheless, it is in great demand in the modern world:
– after submitting one properly executed PCT application and one-time payment of the prescribed fee, the applicant requests legal protection in all states/organizations that are members of the PCT Treaty, and today there are 142 states, including the European Patent Organization and the Eurasian Patent Organization;
– in contrast to the 12-month period for submitting applications established by the Paris Convention, foreign countries interested in the applicant, under the PCT procedure, this period is 30 months (and for some PCT participants – 31 months); in this way, the applicant gets an additional year and a half to conduct marketing research of foreign markets, search for investors or partners, and based on the collected information, to finally decide on the need for patenting in one or another country;- this same additional postponement of one and a half years allows you to collect the necessary funds for the payment of fees and services of a lawyer for the transfer of the PCT application to the national phase, which is much more convenient than the procedures based on the Paris Convention (with a preclusive 12-month period for submitting applications to national agencies) ;
– the PCT procedure provides an opportunity to make changes to the submitted application at least twice, which can become very relevant in case of making non-obvious mistakes in the priority application, or in case new properties of the technology object described in the priority application are discovered in the process of testing or operation;
– within the framework of the PCT system, significant benefits are provided for Ukrainian natural person applicants. Yes, the discount on the PCT application fee for Ukrainian applicants is 90%, that is, out of the established $1,384, our applicants pay only $138.40. The discount on the fee for conducting an international search by the European Patent Office is 75%, that is, from the established 1875 euros, our applicants pay only 468.75 euros;
– in the future, when moving to the national phase, the applicants are also provided with benefits from the payment of fees, depending on which search authority conducted the international search and whether or not an international preliminary examination was conducted.
Briefly summarizing the proposed review, I would like to emphasize that in the field of intellectual property, as in life, there are no ready-made recipes. The author of this article tried to clearly show that each of the existing protection systems has both its advantages and disadvantages, and each object of industrial property, before it is declared as a subject of legal protection, must be carefully and comprehensively analyzed. in particular, taking into account its existing or potential commercial value, regions of use, the presence of analogues existing in these regions that discredit novelty or originality, or identical or similar means of individualization. When making a final decision, it is also necessary to take into account which examination system – in-person, verification or delayed – is established in the department that considers applications and carries out registration/issues security documents.