Intellectual Property

Business Law Companies spend significant resources on research and development. In today's globalized and liberalized world information and new products are disseminated freely. Industrial law contributes to prevention of unauthorized copying and abuse of the results of creative activity and new technical solutions. Under the protection of industrial property rights are particularly: Results of technical creative activity – inventions, utility models Appearance of products – industrial designs Structural diagrams of semiconductor products Designation rights – trademarks and designations of origin Supplementary protection certificates for medicinal products and for plant protection products

Business Law For mechanical engineers following categories are in particular concern: Patent – a form of protection for an invention, a technical solution that is new, is the result of an inventing process and is industrially applicable. Utility model – a form of protection for technical solution which is new, goes beyond mere professional skill and is industrially applicable. Industrial design – a form of protection of a product or a part specifically in the characteristics of contours, colours, shape, texture or materials of the product itself or its ornamentation.

Patent protection Patent protection for an invention can be obtained only if it meets all the requirements for the patentability: A worldwide novelty of the solution. Certain level of inventive activity necessary to find it. The solution must have an industrial application. Whether all these conditions are met for the grant of a patent, determines the so-called examination procedure carried out by Intellectual Property Office (IPO). Worldwide novelty of the invention is determined by comparing the invention with the prior art in the field, that is, what was published worldwide before the priority date. Intellectual Property Office which is to explore novelty of the invention is equipped with an extensive patent database to do so.

Intellectual Property Offices WIPO – World (188) EPO – Europe (38) USPTO – USA SIPO – China JPO – Japan ESAO – Eurasian (Russia +7)

Exclusions from patentability Inventions are not particularly: Scientific discoveries, theories and mathematical methods Artistic creations Schemes, rules and methods for performing mental acts, playing games or doing business Computer programs Services providing information Patents are not granted on: Inventions which use would be contrary to public order or morality Plant varieties and animal breeds or generally any biological processes for the production of plants or animals

Patent rights Right to patent: The right to a patent belongs to the inventor or his successor in title. The inventor is the one who created it by own creative work. Co-inventors have the right to patent in the extent to which they participated in the creation of the invention. The patent rights can be subject of business. The term differs by country but it is usually max. 20 years Corporate invention: If the inventor has created the invention to accomplish the task of employment, the employer becomes entitled to a patent, unless provided otherwise by contract. The right to authorship is not affected. The inventor, who created the invention as an employee, is obliged to inform the employer about that in writing without delay and to provide him with the documents required for the invention assessment.

Invention Registration Registration of the invention Information needed for completing the patent application, including requests can be found on IPO websites. According to these documents simpler application can be processed directly without patent attorney. More complex applications are usually assigned to professional patent attorneys. They can charge hundreds or thousands of euro depending on the application complexity. Patent application (in Europe) consists of the following parts: Request for the grant of a patent Description of the invention Claims (one or more) Drawings (optional) Abstract

Requirements Request for the grant of a patent Should be submitted along with documentation to IPO It is usually available in electronic form on the IPO websites The fee depends on whether it's just an originator, or an organization Must state the Title of the invention (max. 10 words) All the inventors must be designated in it Description of the invention Description of the invention must contain the following elements: Technical field to which the invention relates The background art description Disclosure of the invention (illustrate the problem and its solution) Drawings clarification (if they are present) Description of carrying out the invention Industrial applicability

Requirements Claims The claims must define the matter for which protection is sought in terms of the technical features of the invention. They must be clear and concise and supported by the description. The claims are continuously numbered in Arabic numerals. Reference signs are placed in parentheses. Drawings The images should be drawn on numbered A4 format sheets. It should be used uniformly black thick lines without shading. Cross- sections are indicated by hatching. The drawings must not contain text. Reference numerals are used in the drawings only if they are explained in the specification and vice versa. One sheet of drawings may contain multiple images.

Requirements Abstract The abstract shall indicate the name of the invention, a brief (max. 150 words) summary of what is stated in the description, claims and drawings. General requirements for the application documents: Application documents are supplied in single copy. The application must be signed by the applicant or his representative Each part of the specification (request, description, claims and abstract) must start on a new sheet. In case of paper fillings the documents must be on A4 paper with minimum margins: left 2.5 cm, top, right and bottom 2 cm. All the sheets must be numbered in consecutive Arabic numerals, which must be positioned top centre but not in the top margin.

Options for application abroad National route The applicant may apply for an invention in any state in which the invention is to be protected. The national patent attorney provides the necessary translation and management, which is carried out in each country separately. Despite efforts at unification laws and requirements for the construction of the claims are different in individual countries. European route The invention can be applied at once in all states that are members of the European Patent Organisation (EPO, currently 38 members). Applications can be made through an IPO in any European language and the translation into one of the official languages (EN, DE, FR) might be supplied within1 month. International route According to the Patent Cooperation Treaty (PCT) application filed only in one IPO can obtain protection in 148 Contracting States.

Patent Cooperation Treaty Patent Cooperation Treaty (PCT), has 148 member states. It basically simplifies the filing of an application. It is equivalent to submitting an application individually to all intellectual property offices of the member countries. After submitting the application a international search for novelty is performed. The result of this first phase is not a patent but only an international application prepared and ready for use in the various member states. The applicant therefore based on the research knows whether the invention has a chance for a success = it saves him money. The deadline for entry into the second - the national - phase is 30 months. This period is for the applicant to find out in which countries he wishes to obtain protection. Patent applicant will then have to pay fees for further proceedings, in each of the countries in which we want to protect the invention.

Notes to International Rights Application for an invention abroad can be filed within 12 months of filing application at home The protection of the invention is only valid in the country in which it is signed. If the invention is not granted patent in a country, anyone there may produce and sell the invention, but they shall not export it and sold it into the countries in which the invention is registered and fees are paid

Utility models Utility models are recognised in many countries with different rights. Utility models differ from the invention mainly in lesser need for inventive level, as utility model protects just such technical solutions that are new and go beyond mere professional skill and are industrially applicable. There is no search for novelty nor industrial applicability. The applicant himself is responsible for that. If something is neglected in this respect, anyone can suggest deletion of the utility model and after the procedure it might be removed from the IPO register. Obtaining a utility model certificate is therefore much easier, cheaper and less time consuming than patent. Technical solutions of limited importance are therefore recommended to protect as utility models. Utility model certificate can not be granted to a manufacturing process. Formal application for a utility model is similar to the one of invention. The maximum validity of the utility model is usually 10 years, but in different countries this varies from 5 to 20 years.

Industrial designs Industrial designs relate to the appearance of a product that is new and industrially applicable. It is not a technical, structural, functional or material nature of the product. Industrial designs are used to protect numerous external modifications for example glassware, furniture or car bodies. The application and management procedure for industrial designs is not as complicated as for patents Once a design is registered, the term of protection is generally five years, with the possibility of further periods of renewal up to, in most cases, 15 years The scope of protection is given by the representation of the design, as it is registered.

System First-to-File First to File (FTF) – in all countries The right for the patent belongs to the person who first file a patent application. That date is called a priority date. First to Invent (FTI) – USA before 2013 The right belongs to the person who first conceive an invention (allows so-called submarine patents)