Much of this Red Guide was originally published in the Journal of the Chartered Institute of Patent Attorneys, October 2009
Patent law protects new inventions which have a possible industrial application. Examples of such inventions pervade every aspect of human life: from electric lighting (patents held by Edison and Swan) to ballpoint pens (patents held by Biro). What all of these inventions have in common is that they represent either a product or a process that provides a new way of doing something or offers a new technical solution to a problem. Granting protection for these inventions encourages continued innovation.
In order to obtain patent protection, an invention must be shown to be capable of industrial application, display an element of novelty, and be the result of an inventive step that could not be deduced by a person with an average knowledge of the field in which it was designed.
Guernsey's Patent Legislation - an Overview
In January 2009, Guernsey passed legislation in the form of The Registered Patents and Biotechnology Inventions (Bailiwick of Guernsey) Ordinance, 2009 (the "Patents Ordinance").
It is anticipated that the Patents Ordinance will be brought into force shortly. Meanwhile, as of 25 November 2009, a "post box service" has been introduced (see further below), which allows patent applications to be made in advance of the implementation date.
Once in force, the Patents Ordinance will repeal and replace The Patents, Designs and Trade Marks Law (Guernsey), 1922. The 1922 Law provides for secondary registration only and applications for re-registration are accepted from the UK alone. At present a UK patent re-registered in Guernsey will have protection for 16 years from the date of registration.
Under the Patents Ordinance, Guernsey will continue to be a jurisdiction of secondary registration. However, the Patents Ordinance broadens considerably the number of jurisdictions from which applications for re-registration will be considered and also widens the scope of patentable inventions. As an example, once the Patents Ordinance is in force, an application for re-registration of a US business method patent could be favourably received in Guernsey, unlike the position in the UK.
Guernsey's New Patent Legislation – In Depth
Once the Patents Ordinance is in force, it will be possible to register patents in respect of any inventions (products or processes) which are new, which involve an inventive step and which are capable of industrial application.
Unlike the UK Patents Act 1977, the Patents Ordinance does not contain a section limiting the scope of registrable invention: for example, there is no equivalent to section 1(2) of that Act which excludes computer programs. This is a deliberate choice as Guernsey wished to offer protection to computer programs which has been excluded by the UK.
As a result, US software patents which cannot otherwise be protected within Europe may well qualify for protection in Guernsey. Enquiries thus far suggest this enhanced protection is of considerable interest to holders of US patents looking to establish a foothold.
The Patents Ordinance contains a list of designated countries from which applications for re-registration may be accepted. These are: Australia, Austria, Canada, China, France, Germany, India, Ireland, Israel, Japan, New Zealand, Norway, Russian Federation, Sweden, the United Kingdom and the United States of America. Applications for re-registration may also be accepted from the European Patents Office and Guernsey is free to add additional territories which give effect to the TRIPS Agreement.
Registration and Application Process
Only the proprietor of a patent from a designated country can be registered as such in the Register of Patents. Following the filing of an application, the Registrar can call for additional information to enable him to determine the application. The application must be published and written observations on it will be invited.
On receipt of an application and any written observations, the Registrar can only grant the application if satisfied that:
- the patent is an overseas registered patent;
- the person applying for re-registration is the overseas registered proprietor;
- the invention meets the criteria for a patentable invention set out above; and
- there are no other circumstances which make it inappropriate for the Registrar to grant the application.
If granted, a certificate of registration will be issued and the registration of the proprietor in the Register will have effect from the date of registration.
Where less than 5 years has elapsed since first registration, a patent can be revoked if it appears that: (a) it has been revoked, cancelled or declared invalid in its home country; or (b) the right in the patent has expired in its home country because it has not been extended there. A registration can also be revoked if it appears that (other than in the circumstances set out in (a) and (b) above: the patent no longer qualifies for re-registration; the registered proprietor is no longer such; the registered proprietor applies for revocation; or the appropriate renewal fee has not been paid.
After 5 years have passed following registration, revocation is available only in more limited circumstances, including: upon application by the registered proprietor; an order from Guernsey's Royal Court that the commercial exploitation of a patent is contrary to public policy or morality; failure to pay the renewal fee; or on expiry of the right in the patent.
Expiry of the Right in a Patent
Unlike registration under the 1922 Law (which provides that registration is for up to 16 years), under the Patents Ordinance the right in a patent is defined as expiring when it expires in its home country or, if later, on the date when any extension granted under schedule 3 of the Patents Ordinance expires.
Schedule 3 allows for extension of up to 5 years, in two circumstances. The first is on the grounds of delay, where either the Registrar in Guernsey is guilty of an unreasonable delay in granting an application for registration or there is an unreasonable delay in issuing the patent in its home country. The second is on the grounds of unreasonable curtailment of the opportunity to exploit a medicinal product or plant protection product due to the process of obtaining marketing approval. Thus there is limited scope for extension of the patent in Guernsey, beyond its life span in its home country.
As one would expect, there is scope for a person who becomes entitled to a patent or to an interest in it to be registered as proprietor or to have their interest noted and for modification of Register entries, for example to replicate any amendment in the home country of the patent. Entries can be modified to record the restoration of a lapsed patent, the extension of a patent, the amendment of a specification, any limitation on a patent or the identity of the inventor.
Guernsey Patent Attorneys
The Patents Ordinance provides that anything required to be done under its provisions can be done by a duly authorised attorney. There is provision for the creation of a Register of Patent Attorneys and for regulations to be issued concerning the registration of persons as such.
These regulations are awaited with interest by the IP community in Guernsey – it is not yet known how the Registrar will deal with the practical difficulty presented by the extremely limited number of patent attorneys practising from the Island. For example, will the Register be opened out to UK and European patent attorneys?
Rights Given by Registration as Proprietor
Registration gives the proprietor the exclusive right to use the invention in the Bailiwick of Guernsey (which includes the self-governing jurisdictions of Alderney and Sark). In relation to a product, this means the right to make, dispose of, use or import the product; similarly for a process.
Proceedings for infringement may be brought by the registered proprietor and remedies available in Guernsey include injunctions, delivery up, destruction, damages, an account of profits and declarations as to validity of the patent and alleged infringements. An order for damages and an order for an account of profits are mutually exclusive. No damages may be awarded and no order for an account of profits may be made where a defendant proves that he was not aware and had no reasonable grounds for supposing that the patent was a registered patent. Anton Pillar search orders and other usual forms of interlocutory relief are available in Guernsey.
Where damages are awarded, the court will take into account the negative economic consequences to the plaintiff, including any profits lost by the plaintiff and any unfair profits made by the defendant. The court can also consider elements other than economic factors, including the moral prejudice caused to the plaintiff. Damages can also be awarded on the basis of the royalties or fees which would have been paid, had the defendant obtained a licence.
It is worth noting that a person who – before first registration – commits an act in the Bailiwick in good faith but which would otherwise constitute an infringement, or a person who makes effective and serious preparations to do such an act, has the right to continue so acting notwithstanding registration (although will not be allowed to grant a licence to anyone else to do such an act). The timing of registration can, therefore, be critical.
As one would expect, there is a remedy for groundless threats of infringement.
Conclusions on the Patents Ordinance
The Patents Ordinance represents a significant offering for patent holders. The number of countries from whom applications for re-registration will be accepted is significantly increased from the position under current legislation. In particular, the addition of the US is likely to prove of considerable interest to US patent holders. The broader scope for registrability compared to, for example, the UK position is already proving to be of great interest, even although the Patents Ordinance is not yet in force.
The Post Box Service
As noted above, as of 25 November 2009, and in response to market demand, the Intellectual Property Office opened a ground-breaking 'Post Box' service pending implementation of the Patents Ordinance.
The service allows patent-holders to make an advance application to the Registrar of Intellectual Property for registration of patents and biotechnological inventions, as if the legislation was already in force. The application will need to be supported by a patent registration which has been granted in one of the countries recognised by the legislation. A pre-application examination will be undertaken by the Registrar, who can give an indication as to the likelihood of the invention being accepted for registration, as and when the legislation comes into force.
The service also makes provision for registration of patent attorneys. Details of the fees which will be charged for filing an application using the Post Box Service are yet to be finalised but indications are that these are likely to be in the region of £100. The normal filing fee for an application for registration will also be due in the usual way once the legislation comes into force.
Patent-holders now have the opportunity to get an initial view on the scope for registration of an invention in Guernsey, as well as a swift turnaround of their application and a filing date effective immediately upon the legislation coming into force. Once again, Guernsey's Intellectual Property Office is leading the way, reinforcing Guernsey's reputation as the offshore jurisdiction of choice for intellectual property.
The Patents Ordinance does not deal with utility models. This is an area in which Guernsey's legislature is specifically authorised to pass an Ordinance in due course. Given Guernsey's ambition to position itself as a highly advanced IP environment, and based on offerings from other jurisdictions such as Australia (with its innovation patent model) and Germany (with its utility model), it is expected that Guernsey will shortly introduce protection for inventions which are not sufficiently inventive to meet the inventiveness threshold required for standard or full patents, with a registration process which is less expensive and more straightforward than for a full patent.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.