Finding a way to protect your ideas before it’s too late

Rubik's Brand has been of many firms suing the European Court for delays – complaining that pirate cubes were continuing to be sold. Chartered patent attorney Thomas Prock explains why the legal system isn't an impediment to protecting innovations and which is the best strategy to adopt in preparation.

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 Rubik’s Brand, the maker of the well-known multi-coloured cube, is suing 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, which interprets European law, is not normally involved in the vast majority of IP-related disputes in Europe. Those 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 ten 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 – 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.

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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.

Image: Shutterstock

Thomas Prock is a chartered patent attorney at Marks & Clerk.

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