IP Basics

Inventions in the chemical arts can encompass medicines and diagnostic materials, agrochemicals, petrochemicals, polymers, paints, inks and pigments, novel and high-tech materials, photochemistry, food technology, chemical engineering and many other fields. In many respects, patent practice in these areas is no different from that in other technical fields; however, there some special factors that may need to be considered.

The responsibility for examining European patent applications rests with an Examining Division. Once the Examining Division is satisfied that an application complies with all the requirements of the European Patent Convention (EPC), the applicant is notified of the intention of the European Patent Office (EPO) to grant a patent.

The purpose of a trade mark is to distinguish the goods or services of one trader from those of another. Trade marks allow the public to identify, without confusion, goods or services which originate from a particular person or company. They are valuable assets and care should be taken in the way they are used to ensure that they maintain their value.

This briefing note explains a few important aspects of the US patent system and some of the steps involved in prosecuting a US patent application through to grant.

Under the Paris Convention, an inventor can file an initial patent application (a “priority application”) at his own country’s Patent Office and then – within one year – file patent applications in other countries based on that priority application. For example, a UK inventor could file his priority application at the UK Patent Office and then – within the next year – file patent applications in the US, Japan and Canada based on the UK priority application. This “priority year” provides a number of benefits, the most important of which are described below.

Shortly after grant of a European patent, certain formalities are necessary in order to validate the patent in the EPC (European Patent Convention) states of choice (see our information sheet, “Grant stage of European Patents” for further details on grant phase procedure). A significant proportion of the cost to patentees at this stage is due to translation of the text into the local languages of those EPC states in which it is desired to validate the European patent.

International patent applications filed under the Patent Cooperation Treaty (PCT) do not of themselves turn into patents. Although the World Intellectual Property Organisation (WIPO) that acts as the central clearing centre for international applications will carry out a search and examination and will report this to the applicant, patents are still granted only by national Patent Offices and to achieve this in any particular country the PCT application first has to be converted into one or more national applications in what is called the National or Regional phase.

Under the European patent system, administered by the European Patent Office (EPO), a single patent application is examined and granted but can then be brought into force in a large number of European states including all current members of the EU and some other countries such as Switzerland and Turkey. It represents a convenient way of obtaining Europe-wide patent protection for an invention that is usually less expensive than prosecuting separate applications in individual European countries.

If you have filed an International (PCT) patent application and you wish to obtain grant of a European patent, by the deadline of 31 months from the earliest filing date (typically from the earliest priority date) you will need to start this process by taking appropriate steps at the European Patent Office (EPO) to enter the European Regional Phase (file a Euro-PCT application). This briefing note provides an introduction to that process.

A utility model is similar to a patent in that it provides a monopoly right for an invention. However, utility models are much cheaper to obtain, the requirements for grant of a utility model are in some countries less stringent and the term is shorter.