In our detailled article you get to know how to protect your invention: …worldwide, …without patent or trademark, …before application and …in China.
To protect your invention worldwide you have different possibilities.
At WIPO you can apply for an international registered trademark (IR trademark). It is not an “all-in-one” worldwide trademark but a combination of trademarks in up to 97 countries which you can choose. The conditions change depending if the state, your trademark should be registered in is part of the Madrid Agreement Concerning the International Registration of Marks (MMA) or the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, (PMMA).
You are required to already have the trademark registered as a base trademark (e.g. in your homecountry) before you are able to apply for an IR trademark. Following points need to be identical for IR trademark an the base trademark:
- both trademarks need to be identical
- the IR trademark’s applicant needs to be the same as the base trademark’s applicant (name, adress etc.)
- the Nice classes need to be the same
Remember to write the application for the IR trademark in English, French or Spanish. And don’t forget to do a detailed research e.g. with WIPO’s research tool Global Brand Database or instruct a patent attorney to do so. During the first five years the IR trademark depends on the existence of the base trademark. After that the protection is active for 20 years (MMA) or 10 years (PMMA). A extension is possible as often as you like.
EXPERT TIPP for the application at WIPO: A international trademark application is reasonable if you apply your trademark in more than three countries. A trademark for less countries should rather be applied individually in every state.
In general, patents are territorially limited. To recieve an “international” patent you can make use of the PCT – The International Patent System, the Direct or the Paris route.
The PCT is an international treaty with 151 Contracting States, which makes it possible to simultaneously search for patents in many countries. You only need to file one application instead of several seperate national patent applications. The granting of patents remains under the control of the national or regional patent Offices in what is called the “national phase”.
The PCT procedure includes six steps:
- Filing: you file an international application with a national or regional patent Office or WIPO, complying with the PCT formality requirements, in one language, and you pay one set of fees.
- International Search: an “International Searching Authority” (ISA) (one of the world’s major patent Offices) identifies the published patent documents and technical literature (“prior art”) which may have an influence on whether your invention is patentable, and establishes a written opinion on your invention’s potential patentability.
- International Publication: as soon as possible after the expiration of 18 months from the earliest filing date, the content of your international application is disclosed to the world.
- Supplementary International search (optional): a second ISA identifies, at your request, published documents which may not have been found by the first ISA which carried out the main search because of the diversity of prior art in different languages and different technical fields.
- International Preliminary Examination (optional): one of the ISAs at your request, carries out an additional patentability analysis, usually on an amended version of your application.
- National Phase: after the end of the PCT procedure, usually at 30 months from the earliest filing date of your initial application, from which you claim priority, you start to pursue the grant of your patents directly before the national (or regional) patent Offices of the countries in which you want to obtain them.
The PCT route is simpler, easier and more cost-effective than direct or Paris route filings.
The Direct route
You can also directly file separate applications at the same time in all countries you want your invention to be protected.
The Paris route
The third option to apply for a international patent would be to first file your patent in a Paris Convention country (one of the Member States of the Paris Convention for the Protection of Industrial Property), then file separate patent applications in other Paris Convention countries within 12 months from the filing date of that first patent application, giving you the benefit in all those countries of claiming the filing date of the first application.
The lenght and costs of your patent’s protection depend on the country you recieved the protection in. In general a patent can not be protected longer than 20 years and mostly increases from year to year. You get detailled information from the particular country’s patent office.
A possibility to obtain property rights more favorable is the application for a utility model, also known as the “small patent”. The requirements for the granting are the same like for an invention, indeed the department only examines the formalities and not the novelty or the inventive mind of the invention. A research fee is not required in this case. Indeed it is advisable anyway to retain an expert with the research in order that you don’t endanger your invention afterwards. Technical and chemical procedures are excluded from this kind of property rights and the maximum duration is 10 years instead of 20. Therefore the application and the granting run much faster (mostly it only takes a few months) and your invention still enjoys the full protection rights. Considering the circumstances it is only advisable for some inventions to apply for a utility model. Instead of an annual fee, you only have to pay a maintenance fee which has to be paid after 3, 6 and 8 years respectively. In total the registered design costs 1370 Euros for the whole term of protection. For small inventions this might in some circumstances even pay off more likely than a patent application.
In the “Hague Agreement Concerning the International Registration of Industrial Designs” (Hague system) a possible international protection for designs was determined. The application can be filed with the World Intellectual Property Organization (WIPO), the European Union Intellectual Property Office (EUIPO) or your country’s design office. You can choose in which countries of the members of Hague agreement you want your design to be protected in.
Same as for an international patent, the costs of your design’s protection depend on the country you recieved the protection in. The term of protection is five years counted from the date of the international registration. The costs for the renewal of an international registration for one design are 200 Swiss francs basic fee, 21 Swiss francs standard designation fee, 100 Swiss france surcharge and an individual designation fee (the amount of the individual designation fee is fixed by each Contracting Party concerned). For one design you need to pay at least 321 Swiss francs to renew it’s protection for five more years. The costs for each additional design included in the same international registration are different.
In the majority of countries, and according to the Berne Convention, copyright protection is obtained automatically without the need for registration or other formalities. Most countries nonetheless have a system in place to allow for the voluntary registration of works. Such voluntary registration systems can help solve disputes over ownership or creation, as well as facilitate financial transactions, sales, and the assignment and/or transfer of rights.
… without patent or trademark
If you want to recieve a similar protection for your invention as you would with a patent or trademark, but you want to spend less money and would like the application process to be over in less time, you should apply for a utility model. It protects technical inventions like chemical combinations, food, medicine and many more. Processes however are not protected. If your application is professional and free of mistakes (preferably checked by a patent attorney) it will be registered within a few weeks. Furthermore it is less expensive than a patent, but you need to do more work in advance. This is another task you can easily pass to a patent attorney.
This extra work includes verifying different protection requirements like:
this means it has to be new to the state of the art – it has never been written down or used abroad.
- inventive performance
- commercial applicability
These requirements will not be checked by the responsible office. The utility is protected for three years but the total duration can be expanded to ten years. The fees are 210€ after three, 350€ after six and 530€ after eight year.
IMPORTANT: This protection is only available in Germany and Austria. A european or international application of a utility model is not available.
… in China
Despite some rumours about the chinese IP protection dismissing the owner’s rights it is actually regulated very well and comprehensive. China is famous for a high percentage of IP infringement and piracy, but your inventions will be safe if you protect them right. First of all it is compulsive for foreigners to comission a chinese chancellery or a representative with experiences in IP protection in China.
You can register trademarks, patents, utility models, industrial designs, copyright, plants, forest plants, internet domains and keywords.
You register your trademarks at the China Trademark Office (CTMO). Your application needs to be written in Chinese language and with Chinese characters. Read our article “How to translate and protect your brand for the Chinese market” to get some important tips. Furthermore the trademark needs to be distinctive and, similar to other countries, you need to apply for the desired Nice classes. If your application gets approved the trademark will be protected for ten to twenty years. After this time it is possible to request a extension.
Patents, utility models and designs
Patents, utility models and designs need to be registered at the State Intellectual Property Office (SIPO). The invention is required to be new, industrial applicable and has to include a inventive step. Furthermore it must not be published nor used before the application. Subsequent changes after the application are rarely possible. If someone else is using your invention during the application process you can demand a usage fee. Same as for trademarks your patents, utility models or industrial designs will be protected for ten to twenty years from the day of your applications approval. After this time it is possible to request a extension.
Copyright need to be registered at the National Copyright Administration of China (NCAC). It is not necessary to register your trademark. However it is easier to bring a proof if you can relie on a official application. If you want to register your copyright officially you have the opportunitie to register it international. The protection that you recieve through the copyright expands 50 years afer the creator’s death.
At the State Office of Agriculture (SOA) you can register plants while forest plants will be registered at the State Forestry Administration (SFA). New plant varieties need to be new, unique, homogeneous and stable. Like for all other intellectual properties, the application needs to be in Chinese language. Wine, forest trees, fruit trees and blooming trees are protected for 20 years, every other plant for 15 years.
Internet domains and keywords
If you want to protect a domain and keywords you need to send your application to the China Internet Network Information Center (CNNIC). The best solution would be to register your trademark as domain name with keyword. For this IP right there is no end of the protection.
Would you like to protect your invention, too?
Our experienced attorneys at law and patent attorneys will help you with the application of your invention. Whether you want to conduct a international or Chinese application or want to protect your invention before the application. The first call is free – take action today! 🙂
Sources: WIPO.int | Dr. Oliver Lutze: “Gewerblicher Rechtsschutz in China – Besonderheiten im rechtlichen Umfeld und der praktische Umgang damit”. In: VPP-Rundbrief, 4/2014, S. 220 – 227 |