Many European patents are validated in United Kingdom (UK/GB), France (FR) and Germany (DE). This results in equivalent national patents in each of these countries. Obtaining status information on these individual national patents is getting easier everyday.
The European Patent Office is soon to release its “Federated Register”. This will allow you to access national patent registers via the European patent register. A new tab is provided on the left-hand side of the pre-existing European patent register to access this feature.
While we wait for the Federated Register you may find the following links useful:
You are in UK. You have spent thousands of pounds on a UK or European patent application. How can you reap some return on this investment without suing someone?
One way you can do this is to show that you have applied for a UK or European patent application in your marketing material. You may want to tell the world that your product or service is new and innovative. You may also want to put some distance between yourself and your competitors.
In the UK can mark your product or service as “patent pending”, but this comes with some caveats:
It is an offence to mark your product or service as “patent pending” when you do not, in fact, have a UK or European patent application (see Section 111 of Patents Act 1977). To clarify, you will not have a UK or European patent application if:
the obvious one: you have not filed a UK or European Patent Application; and
the slightly less obvious ones:
you have filed a first application outside of the UK or Europe and have not filed a priority-claiming UK or European patent application;
you have filed a International (PCT) Patent Application but have not entered the UK or European phases after 31 months; and
you have filed a UK or European Patent Application but it has been considered withdrawn or refused.
We now live in a global world. A web-based service is accessible from anywhere on the globe and many business ship worldwide. If you mark a web-site as “patent pending” when you have a UK or European Patent Application, someone viewing the site from outside the UK may assume you have a patent pending in their territory. This could get you into legal trouble. Hence, it is recommend to specify that you have a “UK patent pending” or a “European patent pending”. For a belts and braces approach you may wish to add the application number.
If something changes and you no longer have a UK or European patent application, you have a “reasonable” amount of time to change your marketing materials, product and/or website. As this is a bit woolly, and will vary for each case, it is recommended to instruct that information is changed within 3 months of notification of the change (e.g. after receiving an email from your patent attorneys saying that your application has been refused).
As IPReg begins to find its feet I thought I would clarify the practice for newly-qualified attorneys.
Newly-qualified attorneys do not need to meet the CPD requirements in the year that they qualify – the requirements start on 1 January the following year. So, for example, I became UK-qualified in 2011 and so I need to start recording my CPD activity from 1 January 2012 (for Guidelines on CPD compliance see: here).
Newly-qualified attorneys do, however, need to complete a “CPD and Other Regulatory Information” form (as of 2012). This has a check-box to declare that you qualified in the previous year. The form then needs to be signed and returned to IPReg by end of February.
I could not find the new form on the IPReg website, so if you are missing one I would email email@example.com.
Without much publicity (both inside and outside of the world of IP), fundamental reforms to the procedure for IP enforcement at the Patents County Court (PCC) have come into effect.
Basically, the PCC offers a more streamlined and cost effective forum for low value/complexity claims. Designed for small to medium sized enterprises (SMEs), costs are capped at £50,000. The form of proceedings sits somewhere between proceedings before the UKIPO, the EPO and the High Court. Damages are due to be limited to £500,000 by legislation coming into force in April 2011.
Fletcher Moulton LJ explained in British United Shoe Machinery Company Ltd, v A Fussell & Sons Ltd (1908) 25 RPC 631 at 650 how claims came to be incorporated into a patent specification and their purpose:
“As it is the duty of the inventor to give the fullest practical information to the public he is bound to put in, if, for instance the invention is a process, quantities and times which are the best he knows.
But it would be very cruel to hold him to the invention when carried out only with those best quantities and times, because a person could then take his invention in substance if he did not take it in quite the best way, and the value of the grant would be practically nothing. Hence inventors, in their own protection, took to introducing into their specifications language intended to distinguish between that which was there for the practical information of the public, and that which was there for delimitation of the invention.
Correct delimitation was of the greatest possible importance to the inventor, because if his Patent covered something which was old the Patent was wholly bad. At the same time there was the danger of confining himself to a mere outline which gave delimitation, but did not tell the public the best way within those limits of performing his invention. The one duty required him to state his invention in its most general form, and the other duty required him to state it in its best and therefore in a very special form.
Out of that has arisen the practice, which originally was perfectly optional, of having a separate part of the specification primarily designed for delimitation. That is what we call the Claim.”
The site is actually pretty good and a great improvement over the old HMSO offering (Her Majesty’s Stationery Office if you are wondering – the Queens personal stationery cupboard) . The design is simple enough even attorneys can use it.
For example, typing “patent” as a search term brings me a list all patent related acts and statutory instruments. These can be ordered by date or title. You can even view an Act from 1571. (Trade Mark professional can type “trade mark” for similar fun; if you get bored of IP (or need to sleep) you can also look up the A27 Trunk Road (Shoreham Bypass) Traffic Restriction Order 2010.)
Once you select an item you can choose to view the original legislation (as enacted) or the latest available (as revised). You can also collapse certain sections, print to PDF or HTML, and view a plain text version. When viewing the latest version, amendments are clearly identified and a hyperlink to the implementing legislation is provided.
To be honest, I find it easier to use than the Legislation section of Westlaw. And, unlike Westlaw, it’s free (well, paid for by UK tax payers).