Where to patent your new mousetrap
"The Community Patent will give inventors the option of obtaining, with just one application, a single patent legally valid throughout the EU at a fraction of the existing cost."
- Frits Bolkestein, Commissioner of Internal Markets, March 3, 2003.
Build a better mousetrap, and the world will beat a path to your door. Once you have built the better mousetrap, however, the question becomes where to file your patent?
Inventors here will soon have an additional venue to choose from in deciding where to file for patent protection once the country joins the European Union. Currently, an inventor who wants to obtain a patent for a new and improved mousetrap may either seek protection at the national level, that is, in the country, or at a regional level, pursuant to the Munich Convention, which established the European Patent Office in 1973 in Munich, Germany. Now, thanks to the adoption of a new proposal by the Competitive Council of Ministers in Brussels on March 3, 2003, our mousetrap inventor will soon have a third choice, the community patent, which should not be confused with the European patent.
What is the difference between a community patent and a European patent? At first glance they appear to be the same. The European patent, despite its name, is not an instrument of the EU, nor is the European Patent Office an agency of the EU. Now, however, the European Patent Office will be charged with issuing community patents as well. Both sets of patents are to be issued by the European Patent Office in Munich.
One of the most significant differences has to do with enforcement. A European patent is dependent upon member states, which are not necessarily members of the EU, for enforcement, meaning that an inventor is forced to seek legal action to protect his patent at the local level. In other words, our mousetrap inventor would need to initiate le-gal proceedings in Madrid if someone violated his European patent and made a better mousetrap using his designs in Spain. Under the existing system no legal mechanism exists for the EU as an institution to enforce a European patent. The community patent system will change all this by taking enforcement out of the control of local courts by creating a special intellectual property court to be located in Luxembourg. In declaring its support for the creation of a new intellectual property court, the European Commission stated that "it is necessary to avoid a situation where a national court with no experience of industrial property matters could decide on the validity or infringement of a community patent." The commission added that "only a centralised community court can guarantee without fail unity of law and consistent case law."
With this said, however, national courts will still have jurisdiction over certain patent claims. In particular, a Polish court will be able to adjudicate disputes over ownership rights to the mousetrap, such as often happens between an employee and employer. A domestic court will not be able to adjudicate the infringement of a community pa-tent, but will continue to have jurisdiction over patents issued at the national level.
Any other differences? Yes. A European patent needs to be prepared in the official language of each member state, including some signatories outside the EU. With the number of EU member states scheduled to nearly double in 2004, the cost of preparing a European patent is expected to double as well. The community patent system attempts to reduce the impact of EU expansion on the costs of preparing patents. The community patent will only need to have its first three pages translated into each official language of the EU. The remaining pages of the community patent will only need to be prepared in one of three languages: French, German or English. My apologies to my colleagues, but Polish translations will not be required beyond the first three pages.
It is expected that the cost of obtaining a community patent valid in 25 member states will be approximately €25,000, compared with €50,000 for a European patent. In case anyone is interested, the average cost of a patent in the United States is €10,000.
Will the country's Patent Office become obsolete following EU accession? No. The community patent is intended to give inventors an alternative venue to seek patent protection, not to make national patents obsolete. A Polish patent is valid for 20 years, as will be a community patent. In certain situations our Polish mousetrap inventor may decide to only seek a national patent if for instance, the expected monetary value of the mousetrap does not justify seeking a community or European patent, or if the mousetrap is already patented in other individual member states. A community patent will not have to be filed with the Polish Patent Office in order to have legal affect here.
What about the European patent? Will it become obsolete? Not entirely, although its utility will be diminished. The European patent is valid beyond the borders of the European Union, including Switzerland, Liechtenstein, Cyprus, Monaco, and in the near future, Turkey.
Can our inventor apply for both a national patent and a community patent for the same mousetrap? No. What about a European patent and a community patent? Yes, our inventor may seek both a community patent for the EU and a European patent for Switzerland, Liechtenstein, Cyprus and Monaco. Can a national patent be converted to a community patent? No.
So, which patent system should our inventor use to patent his new and improved mousetrap? In the jurisdiction with the most rats. Care to elaborate? No.
Paul Fogo is a senior attorney at the law firm of Miller, Canfield, Paddock & Stone.
- Frits Bolkestein, Commissioner of Internal Markets, March 3, 2003.
Build a better mousetrap, and the world will beat a path to your door. Once you have built the better mousetrap, however, the question becomes where to file your patent?
Inventors here will soon have an additional venue to choose from in deciding where to file for patent protection once the country joins the European Union. Currently, an inventor who wants to obtain a patent for a new and improved mousetrap may either seek protection at the national level, that is, in the country, or at a regional level, pursuant to the Munich Convention, which established the European Patent Office in 1973 in Munich, Germany. Now, thanks to the adoption of a new proposal by the Competitive Council of Ministers in Brussels on March 3, 2003, our mousetrap inventor will soon have a third choice, the community patent, which should not be confused with the European patent.
What is the difference between a community patent and a European patent? At first glance they appear to be the same. The European patent, despite its name, is not an instrument of the EU, nor is the European Patent Office an agency of the EU. Now, however, the European Patent Office will be charged with issuing community patents as well. Both sets of patents are to be issued by the European Patent Office in Munich.
One of the most significant differences has to do with enforcement. A European patent is dependent upon member states, which are not necessarily members of the EU, for enforcement, meaning that an inventor is forced to seek legal action to protect his patent at the local level. In other words, our mousetrap inventor would need to initiate le-gal proceedings in Madrid if someone violated his European patent and made a better mousetrap using his designs in Spain. Under the existing system no legal mechanism exists for the EU as an institution to enforce a European patent. The community patent system will change all this by taking enforcement out of the control of local courts by creating a special intellectual property court to be located in Luxembourg. In declaring its support for the creation of a new intellectual property court, the European Commission stated that "it is necessary to avoid a situation where a national court with no experience of industrial property matters could decide on the validity or infringement of a community patent." The commission added that "only a centralised community court can guarantee without fail unity of law and consistent case law."
With this said, however, national courts will still have jurisdiction over certain patent claims. In particular, a Polish court will be able to adjudicate disputes over ownership rights to the mousetrap, such as often happens between an employee and employer. A domestic court will not be able to adjudicate the infringement of a community pa-tent, but will continue to have jurisdiction over patents issued at the national level.
Any other differences? Yes. A European patent needs to be prepared in the official language of each member state, including some signatories outside the EU. With the number of EU member states scheduled to nearly double in 2004, the cost of preparing a European patent is expected to double as well. The community patent system attempts to reduce the impact of EU expansion on the costs of preparing patents. The community patent will only need to have its first three pages translated into each official language of the EU. The remaining pages of the community patent will only need to be prepared in one of three languages: French, German or English. My apologies to my colleagues, but Polish translations will not be required beyond the first three pages.
It is expected that the cost of obtaining a community patent valid in 25 member states will be approximately €25,000, compared with €50,000 for a European patent. In case anyone is interested, the average cost of a patent in the United States is €10,000.
Will the country's Patent Office become obsolete following EU accession? No. The community patent is intended to give inventors an alternative venue to seek patent protection, not to make national patents obsolete. A Polish patent is valid for 20 years, as will be a community patent. In certain situations our Polish mousetrap inventor may decide to only seek a national patent if for instance, the expected monetary value of the mousetrap does not justify seeking a community or European patent, or if the mousetrap is already patented in other individual member states. A community patent will not have to be filed with the Polish Patent Office in order to have legal affect here.
What about the European patent? Will it become obsolete? Not entirely, although its utility will be diminished. The European patent is valid beyond the borders of the European Union, including Switzerland, Liechtenstein, Cyprus, Monaco, and in the near future, Turkey.
Can our inventor apply for both a national patent and a community patent for the same mousetrap? No. What about a European patent and a community patent? Yes, our inventor may seek both a community patent for the EU and a European patent for Switzerland, Liechtenstein, Cyprus and Monaco. Can a national patent be converted to a community patent? No.
So, which patent system should our inventor use to patent his new and improved mousetrap? In the jurisdiction with the most rats. Care to elaborate? No.
Paul Fogo is a senior attorney at the law firm of Miller, Canfield, Paddock & Stone.
