Patent International

Paris Convention

Conventions on the protection of patents have existed between states since the late 19th century. The United Kingdom, including Ireland, joined the Paris Convention signed in 1883 the following year. The Paris Convention has been revised on a number of occasions since then.

The Paris Convention guarantees that states will not discriminate against nonnationals in the enjoyment of industrial property rights. No requirement in relation to establishing domicile or residence may be applied as a precondition to the enjoyment of the rights. The Patent Act requires non-EEA nationals to be represented by a patent attorney and to nominate an address for services within the EEA.

The Paris Convention confirms the right of the inventor to be named as such in the patent information. This usually establishes an entitlement to enforce. The Convention provides that patentability continues even if it is prohibited by domestic law.

The Convention recognises the possibility of states legislating for compulsory licenses and forfeiture of rights in response to abuse of those rights. Compulsory licensing is to be preferred to forfeiture. Compulsory licensing must not be exclusive, and there are limits to assignability and the ability to licence it.

A patent number should be referred to on the goods as failure to do so may limit remedies against an innocent infringer of the patent.

The Paris Convention allows for temporary protection for inventions which qualify for patents shown at recognised international exhibitions.

The Convention requires there to be an office to allow the public to obtain details of patents granted and obtain information about patents.

Retaining Priority

Provided a subsequent application is filed in another party state to the Convention within 12 months, priority may date from the filing of the first application. This must be specifically claimed at the time of the initial application.

There is also provision for a priority dating from a previous filing for a short-term patent. This period is now extended to applications claiming priority within a 12 months period in other WTO member states.

Priority dates may arise in relation to applications first filed in more than one state. The time starts to run from the earliest application. Priority may be retained, although the subsequent application is not exactly the same. There must be unity of invention and priority will extend to the elements comprised in the priority application from which priority is claimed.

Patentability Criteria

The Strasbourg Convention (1980) provides criteria for the patentability of inventions. Patents shall be granted for inventions which are susceptible of industrial application which are new and which involve an inventive step.

These criteria are essential for the grant of a patent. A lower standard applies to a short-term patent which may qualify for protection provided it is not clearly lacking inventive steps.

There are exceptions to the requirement for patentability on grounds of public order and public morality. Novelty and the inventive step are considered relative to state of the art worldwide.

Certain non-prejudicial disclosures are permitted, such as at international exhibitions and disclosures obtained by abuse such as breach of confidence.

The European Convention on the International Classification of Patents for Inventions 1955 seeks to provide a uniform scheme of classifications for patents and like certificates. The International Patent Classification Agreement 1975 now applies in place of it.

The Convention provides an international standardised method of classification of patents into classes and subclasses.

The Agreement on the Trade-Related Aspects of Industrial Property rights (TRIPS) is one of the key agreements signed upon the establishment of the World Trade Organisation. Ireland and the European Union are parties.

WTO Minimum

TRIPS sets out minimum standards for the protection of intellectual property. Patents must be available, and patent rights must be enjoyed without discrimination as to the place of invention, the field of technology or whether products are local or imported.

The criteria for patentability (novelty inventive step and capable of industrial application) are set out. The minimum period of protection is 20 years.

Patent Cooperation Treaty

The Patent Cooperation Treaty provides for cooperation in the filing, search and examination of patent applications. Most countries worldwide are party to the Treaty, which creates the International Patent Cooperation Union. It is administered under the offices of the World International Property Organisation.

The Patent Cooperation Treaty effectively permits the postponement of the national application for a period. This may save considerable costs and allow the preservation of priority.

International Application

An international application can be filed at a patent office. It may be a national office, the EPO or the WIPO International bureau. The receiving office grants an international filing date and transmits copies to the international bureau of WIPO and the International searching authority.

The International search authority undertakes research to discover the state-of-the-art relative to the claims. The international search report is compiled and sent to the applicant and to the international bureau.

After approximately 18 months from the filing date, the bureau publishes the specification and send the application and the international search report to designated states to the Treaty, unless this has been waived. The applicant then proceeds to the national phase in each country, which becomes a separate patent application in the national office.

It may be made to the European Patent Office and proceed as a European patent. In certain countries, including Ireland, this is a requirement. The designation is deemed to be to the European Patent Office.

The national phase, if required, will generally involve filing a translated copy and paying the fees applicable. The second phase must be requested within 19 months from the date of filing/priority. A request may be made to extend the timeline for the commencement of the national phase from 20 to 30 months.

Examination

Patent applicants can request a preliminary examination by the international preliminary examining authority dealing with patentability. A written opinion issues listing any objections, and a time limit is set for responses.

The written opinion is a preliminary non-binding opinion on issues concerning patentability. It is not published. Once the opinion is issued by the international searching authority, comments may be made informally.

The written opinion may be converted into the international preliminary report on patentability by the international bureau. This is sent to the designated office and made available for public inspection after 30 months.

The examination report is sent to the applicant and the international bureau. The written opinion may be furnished to the national patent office, which can assist the process of examining the application and may reduce the complexity of the procedures and costs.

An alternative procedure exists by which a demand phase is requested within three months of the date of the international search report. Under this procedure, amendments may be made to the patent claim description and drawings.

The International preliminary examination report is issued approximately 28 months after the priority date. This is sent to the designated offices and made public but not for 30 months.

International to National

If an international application for a patent which designates the State is refused, and following a request made in the prescribed manner and within the prescribed period, the Controller determines that the refusal was caused by an error or omission in an institution having functions under the Treaty, he may direct that the application shall be treated as an application under the domestic legislation, having such date of filing as he may direct.