ENCOURAGING INNOVATION IN IRELAND

As Ireland continues to emerge from one of the worst recessions ever seen it is vital that the next “working generation” is encouraged to foster ideas and innovate.

Ireland’s Best Young Entrepreneur competition was launched in May 2014, with over 1,000 applications received by the 31 Local Enterprise Offices from entrepreneurs aged under 30, and with an outstanding idea/commercial venture for a start-up or existing business.

The overall winner was Eamon Keane, a 28 year old from Templeogue, Dublin who co-founded the parcel tracking software company Xpreso in 2013 after dropping out of his PhD studies and has already signed up Ireland’s biggest independent courier company. Each of the three finalists also won a place at the Google ‘Adopt a Start Up’ programme next year.

It is noted over 5000 prototypes developed by the inventor James Dyson preceded the now hugely successful Dyson hoover.

In Ireland the Irish Patents Office is located on Hebron Road in Kilkenny.

The Patents Office deals with the granting of Patents and the registration of Trade marks and Designs and the administration and maintenance of these industrial property rights and publish a fortnightly Journal called the Patents Office Journal.

In terms of Copyright and Related Rights Act, 2000 they deal with the registration of copyright licensing bodies, references and applications relating to licensing schemes operated by those bodies and the resolution of disputes regarding royalty amounts arising mainly in the area of public performance of sound recordings.

A patent is basically a property right that gives a temporary monopoly for a particular technology to the owner of the patent who possesses an exclusive right that allows them to prevent others from using their invention.

The life of a patent is 20 years (from the date of filing) however, in Ireland it is possible to apply for a short-term patent, which lasts for a 10-year period.

A Short-term patent is not available in the UK and may only have 5 claims. There is no search report generated with a short-term patent, which means that the threshold for the granting of a short-term patent is typically lower than of a 20-year patent.

The criteria for the grant of a short-term patent are as follows: –

“An invention shall be patentable if it is new and susceptible of industrial application, provided it is not clearly lacking in inventive step.”

This represents a lower threshold of patentability than in the case of a standard patent. As to whether what comprises “obvious and not obvious” it is a question of degree in each case.

Many inventions may be “simple” yet not obvious and the court has recognised that simplicity should not be confused with obviousness.

The Patents office aim to grant short-term patent within 9/12 months of lodging application.

For a standard patent the entire process could take 3/4 years and in Japan has taken up to 7/8 years.

The UK Intellectual Property Office offer an accelerated combined search and examination (CSE) and publication and undertake to respond promptly to any objections or outstanding matters where you can reasonably assert that the invention has some environmental benefit.

There are also special provisions for pharmaceutical patents, which can extend the patent period. Ireland is a party to the Paris Convention.

Once you file your patents application you obtain a “filing date” and your invention then gets provisional worldwide protection for 12 months from this filing date. This also allows you to put “Patent Pending” on your invention.

It is possible to amend or take out information post filing of your patent and on foot of search report but you cannot add any new features.

Renewal fees also apply every year in order to keep your patent valid and in force and operate on a sliding scale increasing each year of renewal.

If your patent lapses you can make an application to restore a lapsed patent (where renewal fees have not be paid) and an opposition application can also be made to the restoration of a patent.

A patent cannot be opposed until it’s granted.

In order for an invention to be patentable it must satisfy the following 3 criteria: –

1. It must be “novel” meaning that the invention does not form part of state of the art. Your invention must not have been done before which also includes non obvious modifications to existing invention;

It is always recommended to put in place Confidentiality or non-disclosure agreement when discussing your invention with anyone prior to filing for a patent. Failure to do so could render your invention non patentable.

2. The invention must also contain an “Inventive Step” meaning that the invention is not obvious in view of prior art. This is a very subjective assessment.

3. It must be capable of industrial application.

Commercialisation of product important as the patent process is very expensive.

The cost of a patent application and its prosecution costs depend on a number of factors such as:

1.  Field of technology
2.  Nature of the invention
3.  Length of the patent application
4.  Number of Claims
5.  Hourly rate of the patent agent or attorney and fees charged by the draftsman for preparing drawings, if any, that form a part of the patent applications
6.   Total time taken by the patent agent/attorney in preparing and prosecuting it
7.   Nature and number of objections raised by the patent examiner
8.   Number of countries to be covered
9.   Route used for filing abroad
10.   Translations costs of foreign filings
11.   Number and nature of objections raised by the patent examiner and whether there are any opposition proceedings or appealsIt is crucial to carry out all appropriate searches of the relevant prior art          1. Abstract – brief synposis3. Claims – All essential features of your invention must be included in claim 1.

When an application (which contains the minimum information required) is received by the patents office, a filing date and application number is assigned and a filing receipt is issued. Priority is given to the invention worldwide for 12 months from this date.

It is possible to file an international patent application under the international Patent Cooperation Treaty (PCT), which is a worldwide system for the central filing of patents with effect for 148 Contracting States currently administered by the World Intellectual Property Organisation (WIPO) in Geneva.It is the most flexible and most cost effective where you require protection in more than 3 jurisdictions (e.g. Europe/US/China)

Under the law of the European Patents, patents are only granted for inventions which are capable of industrial application, which are new and which involve an inventive step. An invention can be a (i) product, (ii) process or (iii) apparatus.

The EPO is the executive body of the European Patent Organisation (EPO). It grants patents, in a unitary procedure, for thirty-eight Contracting States to the European Patent Convention (EPC). In addition, it is possible to extend the protection obtained via a European patent to several so-called Extension States. In accordance with Article 2(2) EPC, the European patent shall, in each of the Contracting States for which it is granted, have the same effect of and be subject to the same conditions as a national patent granted by that state.

There is no such thing as a “World-Wide Patent”. To obtain patent protection in other countries you must make an application for a national patent in each country which you require a patent unless the options offered by the (i) European Patent Office or (2) Patent Cooperation Treaty are availed of.

The database Espacenet offers free access to more than 80 million patent documents worldwide, containing information about inventions and technical developments from 1836 to today.

Patents are Territorial in their effect in that an Irish patent only gives the owner of patent exclusive rights in Ireland. This is what makes the process so expensive in that an inventor must apply for a patent in every country that he wishes to market his product in.

It is absolutely vital that you file an initial application for your patent before disclosing your invention to the public.

Once your patent is granted you can licence the product through the negotiating and drafting of a licence agreement.

A patent may also be revoked even after being successfully granted and your patent may be at risk should a competitor decide to oppose its validity (e.g. on the grounds of prior disclosure or infringement) and/or in the defence by a competitor of any infringement proceedings taken by you (where they might investigate the background to your invention/patent).

Industrial designs constitute another intellectual property right.

Design registration grants a statutory right, subject to certain conditions, to prevent others from using the design without your permission – i.e. to prevent infringement. Registration confers an exclusive right to authorise others by means of licensing to use the design.   The design of a product can become synonymous with a company and like all intellectual property (such as trade marks and patents) can have monetary value.

The fraudulent use of a registered design without the authorisation of the proprietor and/or possession of products bearing the registered design may in certain circumstances, be a criminal offence, and criminal proceedings may be initiated under the Industrial Designs Act, 2001.

The Industrial Designs Act 2001 (the “Act”) governs the registration of industrial designs in Ireland dealing with matters such as the qualification of designs for registration, ownership of designs, the exclusive rights granted by registration, infringement and the remedies of the proprietor of a design.
The Industrial Designs Regulations 2002 (the “2002 Regulations”) deal with the more procedural matters in respect of design registration in the Patents Office such as the fees payable, the forms to be used and the procedures to be observed in connection with the application for and registration of industrial designs under the Act.

The Industrial Designs (Amendment) Regulations 2004 (the “2004 Regulations”) amends the 2002 Regulations and removes the requirements to display the novelty and individual character features of a design in an application, publication or registration of the design.

From 1 November 2004 under the Industrial Designs (Amendment) Regulations 2004 it is no longer necessary to provide in an application for registration of an industrial design a statement of the features of novelty and individual character claims in respect of the industrial design.

In addition, the Certificate of Registration of a Design has also been amended by the 2004 Regulations, which has now removed the reference to and requirement for a product listing of the products to which the design will be applied on the Certificate of Registration.

On the 30^th July 2004 the District Court (Intellectual Property) Rules 2004 (S.L 411 of 2004) (the “Rules”) came into force dealing with the practice and procedure in applying for the seizure and delivery up Orders provided for under the Act. An application can be made to court to obtain Orders for delivery up, search and seizure warrants and Orders for the disposal of infringing products in both civil and criminal matters.