There is no doubt that a strong intellectual property (IP)
portfolio can offer an emerging business security from more
established companies, as well as add value through which
investment may be secured. In the fast moving realm of technology
in particular, it is important to keep up or risk being left
behind. Recently, we saw that Rubiks Brand Limited, the makers of
the well-known multi-coloured cube, has sued the European Court of
Justice (ECJ) over delays in a decision over its trademarking of
the shape of its product. This has many people asking if our legal
systems are falling behind the pace of innovation.
Whilst delays at the ECJ are a concern, they need not be an
impediment to protecting your innovations, not least because the
ECJ, whose job it is to interpret European law, is not normally
involved in the vast majority of IP-related disputes in Europe.
Disputes relating to patents, the primary tool for securing
protection for inventions, are, for example, heard by national
courts in Europe, without involvement of the ECJ. National courts
can be a lot more efficient, with both the UK High Court and the
smaller UK Intellectual Property Enterprise Court (IPEC) aiming to
resolve conflicts within 12 months. In Germany, first instance
cases can last between six and 12 months. Final decisions are often
achieved within 12-24 months.
At present, court proceedings to stop the copying of inventions
based on European patents must be brought at a national level. This
can be an advantage given the speed of some national courts.
However, this can also lead to situations in which litigation may
be deliberately brought in slow courts. For instance, a copying
party that suspects that it will be taken to court by a patent
owner may try to tie any such court proceedings to a slow court by
seeking a declaration from that court that there is, in fact, no
copying taking place. One court system that is known to have been
used for such a tactic is the Italian system, in which court
proceedings can last over three years.
This is all due to change, however, with the Unified Patent Court
(UPC) soon to come into effect. This will offer a centralised court
for ruling on patent decisions across the whole of Europe. The UPC
aims to set a strict timeline for all parties involved, and it is
generally accepted that a first instance decision should be issued
within 12 months. This can greatly reduce the uncertainty and
expense caused by pending litigation spread across multiple courts
and allows for speedy resolution, which is becoming more and more
important given the increasing speed of technological
progress.
Nonetheless, before you can go to the courts to prevent someone
from copying your invention, you must first file a patent
application at the patent office of the jurisdiction in which you
wish to obtain protection, and then have the application examined.
Delays during the examination of patent applications are still
relatively common, particularly for European patents filed at the
central European Patent Office. Whilst the normal time to grant is
between three and five years, the speed of examination can vary
greatly across technology sectors and it is not unheard of for some
European applications to take 10 or even 15 years to be granted.
Whilst delays of this nature are welcome in those industries in
which time to market is very long – for example, due to long
R&D times prevalent in parts of the pharmaceuticals industry
and/or due to stringent and time-consuming regulatory constraints,
which are common in the medical devices field – for small,
rapidly growing companies, a granted patent can make all the
difference when looking to secure much needed investment. In the UK
in particular, the quick grant of a patent is desirable as a
granted patent can allow a business to reduce its corporation tax
payments by up to 50 per cent via HMRC's Patent Box
scheme.
So what can be done to more efficiently obtain protection for your
ideas? It's all about strategy.
National patent offices offer the best options for obtaining quick
protection. The UK Intellectual Property Office (UK IPO) can be
very efficient and sets a maximum examination time of 4.5 years. By
filing nationally at efficient patent offices and avoiding the
European Patent Office, unnecessary delays can be avoided.
In addition, many patent offices offer accelerated examination
procedures. For instance, the UK IPO offers a green channel for
environmentally friendly inventions, through which a granted patent
may be obtained within a few months – although whether or not
trying to obtain patent protection at this speed is wise would
depend on the circumstances of the patent applicant and should be
scrutinised closely with the help of a trusted advisor.
Accordingly, by strategically requesting accelerated examination in
targeted jurisdictions, patent protection may be obtained much
quicker.
A further tactic for speeding up grant is to duplicate, or
"clone", patent applications to create so called
divisional applications. This allows you to obtain a patent quickly
by narrowing one of the two applications to a specific
implementation that fits a specific commercial need (the narrower a
patent, the easier it is to have it granted), whilst maintaining a
second, broader application which may take longer to grant but
offers a greater scope of protection.
Whilst the patent system can be slow, by filing early and
strategically choosing which jurisdictions to cover, strong
protection for your innovations can be obtained quickly and
efficiently to help move your company on to the next
level.
This article originally appeared on Real Business and can be
accessed at www.realbusiness.co.uk/article/30672-finding-a-way-to-protect-your-ideas-before-its-too-late.
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.