European Community Patent, Design & Trade Mark Applications
European Community Patent
The European Patent Convention is a member of the International Patent Convention and of the PCT. The average cost of filing a European Patent Convention National Phase application based on a PCT application is about EUR 6 000.00 (as of January 2018, inclusive of the filing of a preliminary amendment to bring the claims into conformity with local patent law and to reduce the total number of claims to 15 or less to avoid claim surcharges).
To this filing, the cost must be added about EUR 850.00 if the International Search was not performed by the EPO and a further EUR 850.00 if the International Preliminary Examination was not performed by the EPO.
If the PCT international application was examined by the EPO and a clear International Preliminary Examination Report issued then prosecution costs of about EUR 1000.00 are expected. However, if this was not the case, the application will be examined by the EPO. If the Examiner objects to some or all of the claims, prosecution costs of at least EUR 3 000.00 can be expected. Should the Examiner accept the application, publication and grant costs of about EUR 3 500.00 will be payable.
Finally, validation in each of the states nominated by the applicant must occur by way of filing a translation of the application or at least the claims.
Please click here for general information on foreign patent filings.
European Community Designs
The European Community Design provides for the protection of designs that extends to all the member countries of the European Union.
Furthermore, the European Community is a member of the Paris Convention. Accordingly, priority can be claimed from a South African design application within 6 months of filing such an application. For more details about South African design applications, please click here.
Two types of design protection are available, namely registered Community Designs, the right to which is acquired by registration, and unregistered Community Designs, the right to which is acquired by the first making available to the public of the relevant design within the European Union.
The requirements for a Community Design is a design that is new and which has individual character. Accordingly, a design will be considered new if no identical design has been made available to the public before the date of application thereof, or where priority is claimed, before the priority date.
A design shall be considered to have individual merit if the overall impression it produces on an informed user differs from the impression produced on the same informed user by any design which has previously been made available to the public. An important factor when considering individual character is to take into consideration the degree of freedom of the designer in developing the design.
The definition of a registered Community Design relates to the appearance of the whole or part of a product as a result of the features of, specifically, the lines, contours, shape, texture and/or materials of the product itself and/or its ornamentation. Design protection does not require any aesthetic merit.
Accordingly, a product is further defined to include any industrial or handicraft item, including, among others, parts intended for assembly into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs. It is of particular interest to note that these broad definitions permit the protection of three-dimensional marks, for example, packaging. This has particular application in circumstances where a novel shape does not have sufficient distinctiveness to be registered as a trademark.
Expressly excluded from design protection are features of a product that are solely dictated by its technical function or shape of the product which permits it to perform a specific function. Neither will protection be granted for a design that is contrary to public policy or to accepted principles of morality. Spare parts are also excluded from design protection.
The duration of a European Community Design is 25 years, subject to renewal every five years from application.
The unregistered Community Design is defined exactly as the registered design, but the protection under such a design is much weaker as the duration is only three years and only unauthorized copying constitutes actionable infringement thereof. It is therefore important that registered design protection is applied for.
As of 1 January 2018, the charge for preparing and filing a European Community Design will typically be between about EUR 2 200.00 and EUR 3 500.00
For more information about European Community design applications, please contact us.
European Community Trade Mark
The European Community trade mark provides for the protection of marks that extend to all the member countries of the European Union. The members include Austria, Belgium, Bulgaria, Denmark, Finland, France, Germany, Greece, Croatia, Ireland, Italy, Luxembourg, The Netherlands, Portugal, Spain, Sweden, United Kingdom, Cyprus, Czech Republic, Estonia, Hungary, Latvia, Lithuania, Malta, Poland, Romania, Slovakia, and Slovenia. At present Turkey is a candidate country with a pending application for the Former Yugoslav Republic of Macedonia.
Furthermore, the European Community is a member of the Paris Convention under which any resident of a Convention country is entitled to claim the priority date of a first application made in a convention country as that of any subsequent application in any other Convention country within a 6 month period.
A Community trade mark must meet two conditions: a trade mark is a sign which can be represented in graphic form, and it must make it possible to distinguish goods and services from those of another company.
The procedure for obtaining a Community trade mark begins with the filing of the application. This is followed by a preliminary formal examination whereafter, if the requirements are met, a filing date is accorded to the application.
After allocation of the filing date, the application is subjected to an examination of the other formalities, including correct fees, classification, priority claimed, etc. A search for earlier similar trade marks is also conducted at this stage, as well as a substantive examination into registrability. The application is then published with a 3 month opposition period. If no opposition is made, the mark is registered in the Register of Community Trade Marks.
The duration of the Community trade mark is ten years, with indefinite renewal of further ten year periods.
For more information on the individual countries, please return to our home page and select a country using the interactive map of the world.