Glossary of some terms used in the field of Intellectual Property.
Chapter I, Chapter II
A patent always includes at least one claim. The claims define the scope of the patent and are therefore crucially important in assessing the protection afforded by the patent. Claims are conventionally written as a single sentence. There is a great deal of accumulated case law relating to the interpretation of claims in a patent specification.
European Union Trade Mark. An informal and explanatory name for the office in Alicante, Spain which administers the European Union trade mark system. The official (English) title for the office is EUIPO which stands for European Union Intellectual Property Office.
At Dummett Copp LLP, we refer to a U.K. patent application filed without claims as an Informal application. This is the cheapest way to get a patent application started and to establish a Priority Date
An order made by a Court forbidding someone to do something. Usually the main object of initiating court proceedings against an infringer is to obtain an injunction to stop the infringement.
Intellectual Property, Intellectual Property Rights, IPR
The collective noun for forms of property which are intangible and which are created in the mind. IP Rights usually refer to Patents, Trade Marks, Designs and Copyright, but there are other forms of Intellectual Property.
For a patent to be granted, the (alleged) invention must be new and must incorporate an inventive step. Another way in which this is often expressed is to say that the invention must not be obvious. Assessment of inventive step is very difficult and there is a large body of case law which relates to this question.
The Madrid Protocol is an arrangement whereby a trade mark registration can be obtained in a number of countries. This is often referred to as an 'International' registration, but each registration has to specify the individual countries in which it is to be registered, and separate fees are payable for each country.
The first requirement for obtaining a patent is that the invention must be new. Sometimes we say that the invention must have novelty. 'New' means that the invention has not been disclosed at all in public before the date when the patent application is filed at the Patent Office.
See Inventive Step.
European Union Intellectual Property Office. The official name for the European Union Trade Marks Office in Alicante, Spain. The Office also administers the new Community Design Registration system. The acronym for this office in French is OAMI and in Germany HABM.
The Paris Convention, which was originally signed in 1883 established the basic priority system which allows an inventor to file a first application in his home country and to hold an option to obtain parallel protection in other countries, with the same priority date, for a period which is twelve months in respect of patent applications and six months for trade mark or registered design applications.
PCT, Patent Co-operation Treaty
The Patent Co-operation Treaty has been signed by most economically significant countries. It is a system for processing in one place the first stages of a patent application which will be effective in many countries, but it does not result in grant of a patent. That is still left to individual countries which accept the initial processing steps carried out under PCT. The PCT processing is divided into two stages called Chapter I and Chapter II.
This term means ‘everything which has been made public before a certain date' which is usually the priority date of a patent (or design) application under consideration. ‘Made public' can mean publication in a documentary form, or made public through having been used in public.
To provide evidence of a priority date, the Patent Office to which the original submission was made will provide a certified document which other Patent Offices in other countries will accept as proof of the priority date.
A patent application has to be filed with a specification which describes the invention and defines the scope of monopoly which is claimed. Preparation of this specification is a highly skilled task.
In many Patent Offices, the prosecution is divided into two parts. The first stage is a search. The second stage is ‘substantive examination'. In substantive examination, an Examiner in the Patent Office makes a detailed examination of the scope of the Claims in the application in comparison with the Prior Art, ie in most cases the documents found in the search stage.