APPLICATION FOR A PATENT
A patent may be granted for an invention provided the invention is :-
i) new
ii) inventive, i.e. not obvious, and
iii) industrially applicable.
The last condition excludes from patentability a few areas such as mathematical theories, methods of doing business, methods of medical treatment, and computer software per se. Otherwise, it is not of great significance. Dedicated computers are likely to be patentable.
An invention is not new if it has been made available to the public, which usually means described in a printed and published document, anywhere in the world before the date of application to patent the invention.
An invention is not inventive if it is obvious in view of any material made available to the public. Whether an invention is obvious or inventive can be an extremely difficult question, but the Patent Office at least should give an invention the benefit of the doubt.
The following steps lead to grant of a patent for an invention.
I SEARCH FOR PRIOR PATENTS
For some inventions, it is prudent to make a search for prior relevant patents. Searches can be made to check that the invention is patentable and/or that its production will not infringe another’s patent. Certain inventions can be characterised by a few words and therefore cheaply searched via a computer database. Others require manual searching.
II INFORMAL APPLICATION
N.B. Initial application must be made before the invention is put into production or disclosed out of confidence.
An informal application gives provisional protection for one year. It must include a specification describing the invention in correct legal and technical terminology.
III FORMAL APPLICATION (one year later)
Within one year of the initial application, claims must be added to the application to legally define the invention. If further developments have been made, a new application may be made which claims the date of the informal application. At this time the inventor must be identified, the Patent Office search requested and foreign applications, if any, made.
A British patent gives protection only in the UK. Foreign applications can be made to individual national patent offices, e.g. the US Patent Office, or to the European Patent office in the case of the major European countries. An International (PCT) route exists and is often advisable.
After some three months the British Patent Office issues a search report and publishes the application including its specification, in printed form, another three months later.
IV EXAMINATION (about 2 ½ years from informal application date)
Within six months of publication of the application , an examination fee must be paid to the Patent Office. After another six months, a report raising objections is likely to be received. These are scarcely ever insuperable, but may mean that that the application will have to be amended.
V GRANT (about 3 ½ from informal application date)
Once the objections have been overcome, the patent will be granted. The significance of grant is that after grant infringers can be sued. If infringements are marketed before grant, damages can be claimed from the date of publication.
Typical costs of applying for a British Patent
(including official fees, ex VAT)
| I | Basic Search – if appropriate | £350 - £ 840 |
| II | Informal application | £550 - £1500 |
| III | Formal application | £650 - £1560 |
| IV | Examination Request | £300 - £1020 |
| V | Examination Objections | £500 |
| ----------------------- | ||
| £1850 - £5420 |
The above cost range shows the difference between very simple inventions and reasonably complex ones. A rule of thumb would be that a British patent costs about £3,300 over 4 years (excluding searching).
Foreign patents are considerably more expensive, especially where translation is required. For instance, the cost (ex VAT) at the stage of a British formal application can be :–
| International, PCT application European Patent application US application |
£4500 - depending on complexity and countries designated £3600 - ditto £1800 |
The PCT route delays major expense although there is an element of duplication, which is generally offset by other advantages.
Please note that further cost is incurred during the prosecution of the foreign applications – as with a British application. The cost of translation on grant of a European Patent is heavy. Effective cover in major markets can cost between £18,000 and £30,000.
APPLICATION TO REGISTER A TRADE MARK OR A SERVICE MARK
When a trade or service mark is chosen, it is useful to bear in mind a few simple rules.
While thinking of rules the following precaution should be borne in mind:-
The following steps lead to registration of a mark.
I SEARCH FOR CONFLICTING REGISTRATIONS
N.B. A search is particularly important for a new mark.
It will reveal any conflicting registered marks, and may indicate that a different mark should be adopted. (A search is not foolproof. There may be established marks which are not registered, but yet give rise to common law "passing off" rights, which may be infringed.)
II APPLICATION
Actual application is relatively straightforward. The applicant, the mark and the goods or services for which the mark is to be used must be specified. When registered, the mark’s registration will be infringed by a third party, if used for the specified goods or services. (It may be infringed if used on similar goods or if a similar mark is used.) If the mark is to be used on a wide range of goods and services, more than one class of goods/services may need to be specified. For registration purposes goods and services are divided into 42 classes. I expect most applications to cover two or more classes.
III EXAMINATION
The Trade Marks Registry examine applications to ensure that marks are suitable for registration; that is to say that they are distinctive and do not conflict with prior registrations.
IV REGISTRATION
Once a mark is acceptable, it is advertised in the Trade Marks Journal. Provided no one opposes it, the mark is then registered.
Marks which are on the borderline of registrability, for instance because of being descriptive, may be registrable on provision of evidence of at least five years’ use. Also a mark may be registrable, if it nearly resembles a third party’s mark and has been used "honestly and concurrently". These situations can cause the following estimates to be substantially exceeded.
Typical Costs of Registering a Trade Mark
(including Official Fees, ex VAT)
| I | Search | £200.00 |
| II | Application – for the first class, excluding preliminary advice and "Camera Ready Copy" for logo mark (if required). | £526.00 |
| Each additional class. | £ 103.00 | |
| III | Examination – Allow | £250.00 |
| IV | Registration. | (There may be cost associated with logo marks). |
Thus the cost, excluding a preliminary search and advice, can vary upwards from £475, typically being in the region of £900 or more.
A United Kingdom registration does NOT have effect outside this country. It is possible to register marks overseas, and it is prudent to do so wherever you trade to an appreciable extent. It is now possible to file a European Community Trade Mark Application.
Whether your trade mark is registered, registrable or not, it is a wise precaution to place a small ™ beside it and use it as an asterisk to a legend at the foot of the literature:
"™ XYMARK is the trade mark of XY Co Ltd"
Finally you may feel that registration is just another cost which can be avoided. I believe that it is a wise precaution, particularly where your business depends upon the "pull" of your trade made in the market place. I have recent experience of clients being involved in substantial legal fees because of lack of registrations.
EUROPEAN COMMUNITY REGISTERED TRADE MARKS
As of now (1st April 1998), European Community trade mark applications can be made to a Community Trade Mark Office in Alicante. (Various names are used, I find it easiest to stick with "European" and "Community").
UNITARY EFFECT
A Community Trade Mark will have effect throughout the European Union, that is in the States listed below. It is a single unitary registration and requires no local confirmation.
REGISTRABILITY
In terms virtually identical to UK Trade Mark law, to be registrable, a Community Trade Mark must have some distinctiveness as a trade mark and not be directly descriptive of goods/services sold under it. Prior local registrations are a potential bar to registrability throughout the Community.
SEARCHES FOR PRIOR CONFLICTING REGISTRATIONS
The application process involves a search through prior Community Marks (none for the time being) and registered marks of some member states. UK registered trade marks will be searched by the UK Registry as part of the Community Trade Mark application process. Despite potential conflicts being identified by these searches, the Community Trade Mark Office will not refuse registration on the basis of prior registrations. There will, however, be an opportunity for prior proprietors to oppose the Community Trade Mark Application.
COEXISTENCE WITH NATIONAL REGISTRATIONS
Community Trade Marks and National registrations can and will coexist.
There is provision for Community Marks to be post-dated by seniority to the date of an earlier registration for a particular State. If for some reason the Community wide registration is revoked, there will be opportunity to convert to National registrations, where seniority has been claimed. By this means, as I understand it, it will be possible to maintain the dates of earlier national registrations. This may save considerable cost on renewal. These provisions are complex. The prudent course is to retain a home registration and register the mark on a Community wide basis as well. If for any reason this is thought not to be possible the home registration can still be augmented by a number of national registrations in the European States of most interest. It remains to be seen to what extent this latter policy will be prudent. For instance it may be necessary where local conflicting rights prevent Community registration.
It does, however, appear to be advisable not to acquiesce in allowing a third party to retain a Community registration of a mark, where you have locally used your mark and only locally registered it. This will dilute the value of the locally registered mark and be likely to render impossible use of the mark in other member states. It appears to be sensible to register as a Community Trade Mark any mark registered in the United Kingdom and used to any appreciable extent in other European countries.
COUNTRIES TO WHICH A COMMUNITY REGISTRATION EXTENDS
The Community Trade Marks will have effect in the following fifteen states :
| AT | Austria |
| DE | Germany |
| NE | Netherlands |
| BE | Belgium |
| GR | Greece |
| PT | Portugal |
| DK | Denmark |
| IE | Ireland |
| ES | Spain |
| FI | Finland |
| IT | Italy |
| SE | Sweden |
| FR | France |
| LU | Luxembourg |
| UK | United Kingdom |
COST OF COMMUNITY TRADE MARK APPLICATION
The cost of registration is comprised of official fees and my on fees. Official fees are set in ECU and are subject to exchange fluctuations. It is too soon to be able to predict the costs with great accuracy. Excluding any preliminary advice, I expect these to be of the order of :
Application for goods/service in one, two or three classes £1,275.00
Fourth and each further class £240.00
Advising on Searches £400.00
Fee on completion of registration £1,175.00
Since the first and last of these fees include substantial official fees, I must ask for payment on account.
Whilst the total cost is substantial, it is very considerably cheaper than registration in each of the fifteen countries and indeed cheaper than a few individual registrations in the major European countries alone.
COPYRIGHT, DESIGN RIGHT AND APPLICATION TO REGISTER A DESIGN
COPYRIGHT IN INDUSTRIAL PRODUCTS
The1988 Copyright Act substantially altered how engineering products are protected by copyright/design right.
Not only does copyright protect original literature, art and music from copyists, it also protects engineering drawings. This protection extends to products made to the drawings, provided the drawings were made prior to 1st August 1989.
Under the 1956 Copyright Act, the Courts have decided that engineering drawings are within the protection provided by the Act despite their lack of artistic quality in the aesthetic sense. The Act also provided that a two-dimensional drawing can be infringed by its reproduction in three dimensions. Thus a product copied from another, itself made to an engineering drawing, can be an infringement of the copyright in the drawing.
This protection under the 1956 Copyright Act was entirely automatic and required no registration. For products designed prior to 1st August 1989, the 1988 Act continues the 1956 Act law until 1st August 1999.
DESIGN RIGHT
The 1988 Copyright Act effectively abolished Copyright in Industrial Products drawn after 1st August 1989, except where these can be regarded as works of artistic craftsmanship or of sculpture; although it still protects the drawings per se e.g. from unauthorised reproduction of them as such.
The 1988 Act introduces a new Design Right which is a largely similar protection. However it has the following features :-
prototypes;
The Design Right will continue the situation that products can be copied with impunity in restricted circumstances only.
It is prudent to mark products :-
Design and Copyright Reserved
© (ABC) Engineers Ltd 1990
The second line is the international copyright notice. 1990 is the year of first publication of the design and gives competitors information as to the end of the ten-year design right.
REGISTERED DESIGNS
The "design" – that is in this context the external appearance in contrast to design right "design" which includes internal, functional detail – of a product can be registered provided that the features of the product are not dictated solely by the function of the product and are, at least, in part aesthetic.
The advantage of registration is that it provides a monopoly right; that is to say that an infringer infringes by producing the same product or one which is not substantially different regardless of whether or not he actually copies the product. Proof of actual copying is essential in a copyright or a design right action, but not for a registered design action.
The process of the application is straightforward. Representations – drawings or photographs – showing the external appearance from all relevant angles are submitted in an application to the Designs Registry in the Patent Office. The application must be submitted whilst the design is still new; if more than fifty articles have been made and sold it is too late to register.
A registration certificate is issued in due course providing various formalities are complied with and the Registry has not found the design to be old.
Registration is renewable for 25 years, but only 15 years in the case of applications made before 1st August 1989.
Foreign registrations made within six months of the British registration can take the date of the British one.
TYPICAL COSTS OF REGISTRATION
(Including Registry fees, using the applicant’s photographs, but excluding preliminary advice and the cost of the photographs, ex VAT) - £275
Foreign registrations cost in the region of £600 per country.
PATENTS
Newly invented games are not easy to protect, primarily because the Patents Act specifically provides that games are not patentable. The only real exception to this is where a new game needs new playing equipment, which must be inventive as well as being merely new.
Many new games utilise playing pieces which, whilst new in appearance, are old in concept, such as a board, playing pieces, dice, chance cards etc. To be patentable, a new game requires more than just these. Thus; most games are not patentable at all.
COPYRIGHT
On the other hand, most games have elements which are copyright, in particular the playing board and the rules.
Copyright is automatic and comes into being as soon as the board is drawn or the rules are written. It is a narrow right. There is no copyright in ideas. Thus if a set of rules providing the same basic game is written in a completely different format with different words, it is more unlikely that there will be copyright infringement. Nevertheless, copyright is useful in preventing exact copying. Accordingly, it is sensible to mark the rules, board and any other copyright game parts with the international copyright notice:-
© A B Games 20--.
The name is the name of the copyright owner; the year is the year of the game’s first publication.
Occasionally it may be worth registering the design of distinctive parts of a game, i.e. parts having a distinctive appearance. Such registration is a formalisation of copyright and must be done before sale of the game.
TRADE MARKS
The single best protection for a game, particularly once it is established, is registration of its name as a trade mark, because a copyist will want to copy the name. However, the name should be chosen with care since descriptive names, surnames and geographical names are not registrable.
It is therefore sensible to choose a registrable name and reasonably early to search the Trade Marks Register, to make sure that no-one else has the mark registered for a game.
Registration does not have to be sought immediately on invention of the game, but is prudent once serious commercialisation is in prospect.
PASSING OFF
In the absence of trade mark registration, some recourse may be had against an infringer using the same or a similar name, or indeed a game having a similar "get-up" or appearance. However, this is applicable only after a game has acquired a substantial reputation in the marketplace.
CONFIDENCE
At an early stage, usually when a games originator is seeking a backer, it is prudent to keep the game confidential. This should include obtaining confirmation from potential backers that they will keep the game, its name, its concept and its details confidential.
Once this confirmation has been achieved, it the disclosee abuses the confidence, the discloser has a right to sue.
SUMMARY
Games are, in general, not patentable, but have copyright components. Copyright is automatic, but is worth laying claim to. The game should be given a registrable trade mark. It should be kept confidential as long as possible.
The scope of these notes is to give the bare bones only of usual patents, designs and industrial copyright licensing. Please note that this is a complex subject and that finalised licence agreements are likely to include clauses relating to details beyond the scope of these notes.
LICENCE
A patent (and the other rights) gives its proprietor – the
licensor – the exclusive right to manufacture and sell a product in a country. In a
licence, the licensor permits someone else – the licensee – to manufacture and
sell in exchange for payment. Very often the licence is exclusive. Exclusivity not
only bars the licensor from granting anyone else a licence for the country concerned, but
also bars him from manufacturing and selling in that country.
PAYMENT
Payments generally comprise three elements –
This payment is an initial payment which the licensor likes to see at the very least as a token of good faith. In practice the licensor is likely to be involved in heavy legal and patent costs and looks to the licensee for payment of a t least party of these. Often the licensor will be making available a considerable amount of know-how and can seek payment for this via the premium.
ii. Exclusivity payments.
These are minimum payment which the licensor will expect to be made in one year, to ensure that the licensee is trying hard enough to exploit the product. The normal penalty for failure to make the exclusivity payments is loss of exclusivity which allows the licensor to exploit the product himself and/or appoint another licensee.
iii Ordinary royalties.
These are generally payments bases on a percentage of ex. works sales price. The actual percentage rate varies widely according to the nature of the product. An alternative to the percentage basis is a flat rate payment per product – inflation linked.
PRODUCT
The exact nature of the product being licensed is important and should be carefully defined.
TERRITORY
The licence may be for one country only, or for a number of countries. Difficulties can arise with EEC law where the territory is a part only of the EEC. (There are guidelines as to what is acceptable under EEC law as regards exclusive licenses).
THE PATENTS
The patents under which the licence is granted need recitation. It should be made clear which of the licensor and the licensee is to pay for keeping the patents in force. Generally this will be the licensor.
OTHER ASPECTS
These can include –
In contemplating a licence, it is sensible for the licensor and licensee to agree on the basis ground rules covering–
Exclusivity
Payment
Product licensed and
Territory
before becoming involved with the further details.
Every licence requires tailoring to the particular situation involved.
NIGEL BROOKS CPA
10th October 1998
©Nigel Brooks 1988,1990,1998