GLOSSARY (P)

The Paris Convention is a treaty to which around 177 countries worldwide are signatories (as of 9th October 2017). After first filing a patent application in one of the 177 countries, the Paris Convention provides a 12 months grace period to then file subsequent patent applications for the same invention in one or more of the other countries.

PASSING OFF

The law of ‘passing off’ is used to protect unregistered Trade Marks, in order to succeed in a passing off action, it must be shown that:

1) there is ‘goodwill’ in the unregistered mark,

2) that the third party goods/services are being misrepresented as those of the owner of the unregistered mark (even if unintentional), and

3) that there has been (or is likely to be) damage as a result of that misrepresentation.

PATENT

A patent is a monopoly granted to an inventor by the State for a limited period of time, in exchange for public disclosure of the invention when the patent is published.

PATENT ATTORNEY

This is a graduate engineer or scientist who has undergone extensive training in practice and has passed a set of professional (legal) exams. A European Patent Attorney is authorised to represent clients before the European Patent Office, and a British Patent Attorney is authorised to represent clients before UK IPO. A Chartered British Patent Attorney is a member of the UK professional governing body, the Chartered Institute of Patent Attorneys (see www.cipa.org.uk) and abides by rules relating to professional conduct.

PATENT BOX

The Patent Box enables companies in the UK to benefit from a lower rate of Corporation Tax to profits earned after 1 April 2013 from its patented inventions. The relief will be phased in from 1 April 2013 and the lower rate of tax to be applied will be 10 percent, although the rules changed after 30th June 2016. See – The Patent Box.

PATENTABLE INVENTION

A patentable invention is any invention for which a patent may be granted. A patent must be new, that is not form a part of the state of the art, involve an inventive step, that is not be obvious to someone skilled in the art, and be capable of industrial application. Discoveries, scientific theories and mathematical methods; literary, dramatic, musical or artistic works and aesthetic creations; schemes, rules or methods for performing a mental act, playing a game or doing business, or a program for a computer; the presentation of information; such inventions are not considered patentable.

PATTERN MARK

A Pattern Mark is a non-conventional Trade Mark, which is composed of a regular sequence of elements (or a pattern) which repeats.

PCT APPLICATION

This is an international patent application that is potentially effective in around 152 countries worldwide (as of 9th October 2017). There is no such thing as an international (granted) patent, only an international application. A PCT application undergoes a centralised application process, with filing occuring at a single Receiving Office (e.g. UK IPO) in a single language with payment of fees in a single currency. The application process includes two phases, an initial international phase and a subsequent national/regional phase.

A clear advantage to having a PCT application is that it delays making the decision of where an applicant would ultimately like patent protection until 30 months from the filing (or priority) date of the PCT application, i.e. the national/regional phase. This consequently delays payment of what can be substantial patenting costs until this time too. This extra time is often useful for inventors to seek financial backing, to test the market with a new product, or simply to sell the patent.

POSITION MARK

A Position Mark is a non-conventional Trade Mark, which consists of the specific placing or positioning of a Mark on a product.

PRELIMINARY EXAMINATION

A preliminary examination will occur to ensure that a patent application meets the formal requirements for filing. It does not assess the patentability of the invention.

PRIOR ART

This is a public disclosure of, for example, an invention or design that has occurred before the filing date of an application for an intellectual property right, such as a patent. Typically, it is a written disclosure but it could equally be an oral disclosure. What constitutes ‘prior art’ very much depends on the intellectual property right in question and the jurisdiction or official body which governs the application process.

Once identified, prior art can be used to prevent the grant of a patent application, or it can be used to invalidate the patent post-grant.

PRIORITY

After an initial application has been filed, a second (or third, or fourth…) application may be filed within a set period following the initial filing ‘claiming priority’. This priority claim means that subsequently filed applications retain the filing date of the initial application, which affects the prior art that may be officially cited against the applications. For patents, the priority period is 12 months, for designs and trademarks, the period is 6 months.

PUBLICATION (PATENT)

Occurring automatically around 18 months from the filing (or priority) date, this is when the patent application becomes part of the public domain. Publication also marks the point at which provisional protection of an invention begins, which can affect damages obtainable during any subsequent infringement action. Early publication may be requested at any time before 18 months to provide provisional protection in the case of actual or likely infringement.