Different IP protections, and why you might need them
The realm of Intellectual Property (IP) holds a far greater diversity of protections than most of us realize. There is a way to safeguard your intangible assets for just about every scenario.
The majority of your Intellectual Property portfolio can be covered by the three most common seals of IP authorship – patents, trademarks and copyrights. However, there are situations in which alternative measures can (or must) be taken to ensure your ideas are certified as your own. For these cases, knowing the ins and outs of these less common forms of IP protection is just as critical as understanding the traditional trademark and patent processes.
Provisional patent application
Provisional patent applications are available in some countries – most notably the United States and Australia – as a means to record an invention in progress. They are frequently used as a stopgap if an invention needs further testing and improvement. Provisional applications are not internationally published. Only when filed as a non-provisional patent will they show up, after grant, in both domestic and international patent databases accessed by search engines like the World Intellectual Property Organization's (WIPO's) Patentscope and Dennemeyer's Octimine.
An additional aspect of provisional patents should be kept in mind: They expire after 12 months in their Australian and U.S. iterations and around that long in the handful of other countries that offer them. Moreover, they afford their holders little to no legal protection until they become part of a non-provisional application that is eventually granted and published.
Your best bet with a provisional patent is to work on and submit a full-fledged patent application during their 12-month term. This is not only common sense, it is also helpful in establishing a "chain of custody" for the IP in the event you find yourself in a legal dispute later on. On the other hand, for more advanced inventions, starting immediately with a non-provisional application is a better option to save costs and get an early search report and official examination.
Additional stopgap protections
Other countries have classes of IP registration that "split the difference" between provisional and standard patents – more rights and formal protection than the former, but with a shorter lifespan than the latter.
The utility model option offered by certain EU member states is an excellent example of this. Available in Austria, Bulgaria, Czech Republic, Estonia, Finland, France, Germany, Greece, Ireland, Italy, Poland, Portugal, Slovakia and Spain, utility models offer inventions legal protections similar to patents. The tradeoff is that they only apply for seven to 10 years – depending on the country – instead of a conventional patent's 20.
Utility models make the most sense if you have had a full patent application rejected by your nation's IP regulation office for lack of inventiveness. In countries offering them, inventors can petition that patent applications be turned into utility models as a way to salvage at least a few years' legally enforceable protection.
Safeguarding blueprints with design rights
If you currently possess blueprints for a piece of IP – be it a new zipper system for garments or anything else featuring a novel "look and feel" – you can potentially protect them in the EU via a design right. The European Union Intellectual Property Office (EUIPO) offers these in two distinct categories:
- Registered community design (RCD): This right is ideal for industrial designs or fashionable everyday-use objects. It is initially valid in all EU member states for five years and can be renewed four times after the first expiry. After 25 years, the renewal options lapse.
- Unregistered community design (UCD): Creators automatically obtain this right after the first public appearance of their design – but it lasts only three years and cannot be renewed. You would be most likely to see this category in the world of high fashion.
Why obtain a design right alongside a copyright? In a word: strength. These rights interact cumulatively, making it much more difficult for anyone to copy your IP. The same is also true for the additional security layer offered by design marks and 3D trademarks.
While registered trademarks can include – and, to a certain extent, protect – domain names, this is not always the case. As part of your commercial strategy, it may behoove you to seek and obtain official domain name registrations. This can be done on a national, generic or regional level – such as with the ".de," ".org" or ".eu" domains, respectively. It is worth noting that, unlike trademarks, domain names can be merely descriptive of the site's precise function. Such names would fail to satisfy the threshold of distinctiveness for a trademark application.
Along somewhat similar lines, database rights are obtained ex lege if you have collected and systematically or methodically arranged specific data - these last for 15 years.
Additionally, a unique framework for the organization and classification of the gathered data may qualify you for automatic copyright - but this protection does not extend to the database's actual contents. Even if you used proprietary software to create the database, that software's IP could only be protected in terms of its exact source code.
In certain jurisdictions, such software elements may also form part of a multi-device patent application. That said, be aware that regulators and courts have not always been willing to grant or uphold software patents.
Generally speaking, you would patent a pharmaceutical the same way you would any other invention – using whichever standard patent application best fits the item you are attempting to register in your country. But differences do sometimes apply. In some jurisdictions such as Australia and the EU, pharmaceutical patent rights may be extended via supplemental protection certificates for an additional five years: up to 25 years instead of 20.
Also, the patenting of "second medical indications" – new uses of a known drug – is determined differently from country to country. As such, knowing what these standards are for all of a drug's intended markets is essential.
Plant or botany patents protect the rights of botanists and professional breeders when creating unique plant varieties, with a few exceptions. The United States refuses to grant patents for uncultivated (wild) and tuber-propagated plants, even when the latter result from transformative cultivation processes. The EU, meanwhile, excludes patents for plants produced via natural (non-modifying) breeding processes.
The importance of diligence
When you have an invention, design or novel method you want to protect, it is crucial not to launch headlong into the process without preparation. Do your due diligence to know exactly what IP registrations you will need and what protections they offer. The industry experts at Dennemeyer can provide you with invaluable advice, research and filing services, as well as the full spectrum of IP legal representation to meet any challenge and clear any hurdle.
An interview with Frédéric Blanc, Managing Director of Dennemeyer & Associates France.