Author: Autor

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Supplementary Protection Certificate (SPC)

The Czech and many foreign law regulation provides additional protection for patented pharmaceutical products or plant-protective agents. The validity period of the patent has been extended by the amount of time necessary to obtaining a marketing licence from the competent authorities decreased by 5 years, i.e. this provides for a longer patent protection whereby the normal 20-year period of validity of the patent may be extended to at least 25 years. The supplementary protection certificate must be requested within 6 months of the date of first authorisation to market the product as a medicinal product or the date of grant of the patent, whichever is the latest.

The legal effect of a supplementary protection certificate is substantially the same as that of the patent upon which it is based.

Our international presence and our network of associate Intellectual Property firms around the globe allow us to move swiftly to protect our clients’ ideas almost anywhere on Earth.


GRANT OF SUPPLEMENTARY PROTECTION CERTIFICATES FOR MEDICAMENTS AND PLANT PROTECTION PRODUCTS

The National Office shall grant supplementary protection certificates (thereinafter “certificates”) for substances protected on the territory of the Czech Republic by the valid patent, if they are the active substances of the products which prior being placed on the market, are subject to the registration according to the special regulations.

The active substance shall mean a chemically manufactured substance or a combination of substances, a micro-organism or a combination of micro-organisms, which have general or specific therapeutic or preventive effects with regard to human or animal diseases or which may be administered to the human beings or animals in order to disease diagnosis, improvement or arrangement of their health condition or which are destined to the protection of plants or plant products.

The product shall mean any active substance or a combination containing one or more active substances put up in the form for being placed on the market as a medikament or a plant protection product.

Application for a certificate

The application for a certificate shall be filed by the proprietor of the patent, whose subject-matter is a substance, except for the patent granted according to national regulation, or a method for obtaining a substance or a use of a substance as a medicament or as a plant protection product (thereinafter “basic patent”), or his successor in title.

The application for a certificate shall be filed within 6 months from the date on which the decision on the registration of the product is issued according to special regulations, if the registration is made prior to the grant of the basic patent, the application for a certificate shall be filed within the period of 6 months from the date on which the patent is granted.

When filing the application for a certificate, the applicant shall pay the administrative fee according to the special regulations. The Office shall record the filing of the application for a certificate to the Patent Register and publish it in the Bulletin. The publication shall contain the name and address of the applicant, the number of the basic patent and the title of the invention protected by the patent, the number and the date of the registration, including of the mention of the product, putting on the market of which is authorised by means of this registration.

Subject-matter and effects of the certificate

Within the limits of the protection conferred by the basic patent, the protection by the certificate shall extend to the chemical substance or a combination of substances, micro-organism or a combination of micro-organisms, which represent the active substance of the registered product, as well as to every use of the subject-matter of the patent as a medicament or plant protection product, which was authorised before the expiry of the certificate. The certificate shall confer the same rights as conferred by the basic patent; the certificate shall be subject to the same limitations and the same obligations.

Duration of the certificate

The certificate shall take effect for a period equal to the period, which elapsed between the filing date of the basic patent application and the date of the first registration enabling to place the product on the market in the Czech Republic as a medicament or plant protection product, reduced by 5 years, but at most 5 years from the date, on which the certificate takes effect. The certificate shall take effect after the expiry of the lawful term of the basic patent. For maintaining the certificate, the proprietor shall pay yearly administrative fees according to the special regulations. The rights of third persons, which after the expiry of the period for payment of the maintenance fee without such fee being paid, in good faith have begun to make a use of the subject-matter of the invention or have realised serious and effective preparations to use this invention, are not affected by the payment of this fee in the additional time limit.

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Annuities, Renewals and Maintenance

When a patent is granted, it remains in force only so long as annuity fees are paid. These become due in respect of the fifth and subsequent years from the application date and increase annually.

We offer the maintenance of annuities or renewals and we can communicate directly with the owner, inventor or with the attorney of an IP right.

The obligation to pay the maintenance fees shall arise by the announcement of the grant of the European patent in the European Patent Bulletin. The maintenance fees shall be paid to the Office and shall be payable in advance on the anniversary of the date of filing the application. If there is a period shorter than 2 months between the announcement of the grant of the European patent and the date corresponding to the date of filing the application, the proprietor of the European patent shall be obliged to pay the first maintenance fee within 2 months from the date of announcement. If the maintenance fee is not paid within the prescribed time limit, it can still be validly paid within an additional period of 6 months in the double amount.

The rights of third persons, which after the expiry of the period for payment of the maintenance fee without such fee being paid, in good faith have begun to make a use of the subject-matter of the invention or have realised serious and effective preparations to such use, are not affected by the additional payment of the maintenance fee.

Maintenance fees for a patent shall be paid for individual years of duration of a patent, starting from the day of filing of an invention application. The first maintenance fee for a patent shall be assessed by the Office in amount corresponding to rates of maintenance fees for a patent for the period from the day of filing of an invention application until maturity of the assessed maintenance fee for a patent. This fee shall be payable no later than 3 months from coming into force of a decision about the grant of a patent. Maintenance fees for a patent relating to following years shall be payable, without assessment, no later than on the day, in which the previous annual period expires.

The payer of maintenance fees for a patent shall be the patent holder. The payer of maintenance fees for a European patent shall be the holder of the European patent with effects for the Czech Republic (“European patent”).  The payer of maintenance fees for supplementary certificates shall be the holder of the supplementary protection certificate for medicaments and for plant protection products (“supplementary certificate”).

Maintenance fees for a European patent shall be paid for individual years of duration of a European patent, starting from the day of filing of a European patent application with effects for the Czech Republic. The first maintenance fee for a European patent shall be paid without assessment only for years, which follow after the annual period, in which the grant of the European patent was published in the European Patent Bulletin. If the first maintenance fee for a European patent becomes due for payment within 2 months from the day of publication of the grant of the European patent in the European Patent Bulletin, such fee shall be duly paid if it is paid within 2 months from the day of such publication. Maintenance fees for a European patent relating to following years shall be payable without assessment no later than the day, in which the previous annual period expires. Maintenance fees for supplementary certificates shall be paid for individual years of duration of validity of a supplementary certificate, starting from the day of filing of an invention application or filing of a European patent application with effects for the Czech Republic, which follow the last annual period of validity of a patent or validity of a European patent. The first maintenance fee for a supplementary certificate shall be payable before expiration of the last annual period of validity of a patent or a European patent or within 2 months from the day of coming into force of a decision about the grant of a supplementary protection certificate, whichever expires later. Maintenance fees for a supplementary certificate relating to the following year shall be payable without assessment no later than the day, in which the previous annual period expires.

In case of every payment of maintenance fees for a patent, maintenance fees for a European patent or maintenance fees for a supplementary certificate (“maintenance fees”), the payer shall be obliged to state the patent, the European patent or the supplementary certificate to which the maintenance fee payment relates. If it is impossible to determine the purpose of payment clearly, the Office shall invite the payer to communicate such purpose in writing within the stipulated period of time. If the payer fails to satisfy such invitation, the payment shall be deemed not made and the Office shall return it.

Unless the due maintenance fee is paid in the required amount, the Office shall invite the payer to pay the remaining amount within 15 days from delivery of the invitation. After the lapse of time without any actions taken, the maintenance fee shall be deemed unpaid. The Office shall return the incomplete amount to the payer within 30 days from the day of such lapse of time. Provisions of national regulations shall not be hereby affected.

The maintenance fee can be duly paid no earlier than one year before its due date. The Office shall recognise the maintenance fee, which was paid prematurely in the required amount, as duly paid only on the basis of a written request of the payer provided that it is paid in amount stipulated by national regulations.

Unless the maintenance fee is paid within the required period of time or if it is deemed not paid, the payer can pay it additionally within 6 months from the due date. In this case the payer shall be obliged to pay, together with the due maintenance fee, also penalty in amount equal to the due maintenance fee.

Unless otherwise stipulated by national regulations, it shall not be possible with regard to a maintenance fee

  • -to waive the lapsed time for its payment,
  • -to permit postponement of its payment, or
  • -to permit its payment in instalments.
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Patents

The patent-related services we provide to our clients include:

  • Developing and executing prosecution strategies not only to protect a client’s products, but also to analyse those of its competitors to help ensure that the client realizes value from its intellectual property assets;
  • Patent, Europatent, PCT and SPC Application Preparation and Prosecution;
  • Advise on whether a patent can be granted;
  • International patent protection and national phases;
  • Civil litigation at both the trial and appellate levels, including infringement and dilution cases, counterfeiting, grey-market goods, false advertising, and cyber squatting;
  • Industrial Property Office and European Patent Office litigation, including oppositions and cancellation proceedings;
  • Preparing and negotiating licenses, assessing the licensing value of competitors’ patents, and guiding the client in the decision to license;
  • Monitoring the field to know when a client needs a clearance opinion or has a potential interference issue. These efforts can help direct the client in research and development areas that minimize patent obstacles;
  • Providing counsel on business-related matters, including antitrust and competition issues;
  • Advising on potential litigation strategies, and, when necessary, deploying experienced trial and appellate teams;

Our major area of endeavor is patent application work, including patent searching, preparation and filing of patent applications in the Czech Republic Industrial Property Office in the European Patent Office and through Patent Cooperation Treaty (PCT).

Whoever invents or discovers any new and useful process, machine, manufacture or composition of matter or any new and useful improvement thereof may obtain a patent.
Inventions which are new, involve an inventive step, and are suitable for industrial application” may constitute the object matter of a patent.

It is generally only through patent protection that others can be prevented from copying one’s inventions. Our goal is to obtain the best possible patent protection for our clients at a reasonable cost.
Our firm have the technical expertise in many diverse areas of today and tomorrow to help our clients protect their intellectual property.
We can file for patents abroad. We also do a significant amount of work for patent firms and other clients in foreign countries who need patent representation in the Czech Republic or in the European Community

We will work with you to determine the optimum strategy for obtaining protection. This includes advice concerning the use of the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT) in order to defer costs and maintain the maximum flexibility in selecting the countries where protection is to be sought. We also offer a full “national phase” service in all member states of the EPC for clients seeking patent protection through that Convention.
We have technical specialists in virtually every field where patents may be obtained. We can also advise on analogous rights and know-how in such areas as computer software, bio-tech, plant patent, utility model, copyright and design right issues.

Small Improvements Can Have a Large Impact!

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Foreign patent application based on Paris Convention period

Foreign patent protection will enable you to prevent others from profiting from your idea in other countries.

Many countries will allow you to claim priority from your national application. If you apply for a national patent (or filed a utility model application), we recommend filing foreign patent applications within one year at the latest from the earliest relied on filing date of your national patent application (Paris Convention period). The proper foreign protection for your invention will depend upon your business plan.

Filing in foreign countries not only increases your patent protection but also increases the market value of your idea, particularly to companies that import and export their products. Furthermore, if you plan to be the exclusive source of the invention and intend to manufacture your product overseas, you should definitely want to file for patent protection in those countries.

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International patent application

In addition to applying for a patent in the EU state, you should consider seeking patent protection in other countries. By filing an international application or applications in selected countries, you can expand the potential market for your invention.

An international application via the Patent Cooperation Treaty (PCT => Patent Cooperative Treaty; available for multi-country filing) can preserve your options to pursue patents in over 150 countries around the world. If filed within 1 year of your first filed priority patent and/or utility model application, you can have up to 31 months from your priority filing date to apply for patents and/or utility models in these countries.

International patent applications may be filed directly at the World Intellectual Property Organisation in Geneva or through Czech Industrial Property Office.

International application under PCT

Applications for the protection of inventions in any of the Contracting States may be filed as international applications under PCT Treaty.

The international application shall:

  • – be in a prescribed language;
  • – comply with the prescribed physical requirements;
  • – comply with the prescribed requirement of unity of invention;
  • – be subject to the payment of the prescribed fees.

Any resident or national of a Contracting State may file an international application. The Assembly may decide to allow the residents and the nationals of any country party to the Paris Convention for the Protection of Industrial Property which is not party to this Treaty to file international applications.

The concepts of residence and nationality, and the application of those concepts in cases where there are several applicants or where the applicants are not the same for all the designated States, are defined in the Regulations.

The Patent Cooperation Treaty makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing an “international” patent application. Such an application may be filed by anyone who is a national or resident of a PCT contracting State.

The Treaty regulates in detail the formal requirements with which any international application must comply.

The filing of a PCT application automatically has the effect of the designation of all PCT contracting States. The effect of the international application in each designated State is the same as if a national patent application had been filed with the national patent office of that State.

The international application is subjected to what is called an “international search.” That search is carried out by one of the major patent offices and results in an “international search report,” that is, a listing of the citations of published documents that might affect the patentability of the invention claimed in the international application. In addition, a preliminary and non-binding, written opinion on whether the invention appears to meet the patentability criteria in light of the search report results is also issued. The international search report and the written opinion are communicated to the applicant who, after evaluating their content, may decide to withdraw his application, in particular where the content of the report and opinion suggest that the granting of patents is unlikely, or he may decide to amend the claims in the application.

If the applicant decides to continue with the international application with a view to obtaining national (or regional) patents, he can, in relation to most contracting States, wait until the end of the thirtieth month from the priority date to commence the national procedure before each designated Office by furnishing a translation (where necessary) of the application into the official language of that Office, paying to it the necessary fees and acquiring the services of local patent agents.

If the applicant wishes to make amendments to the application, for example, in order to overcome documents identified in the search report and conclusions made in the written opinion, and to have the potential patentability of the “as-amended” application reviewed, the optional international preliminary examination may be used. The result of the preliminary examination is an international preliminary report on patentability (IPRP Chapter II) which is prepared by one of the major patent offices and which contains, once again, a preliminary and non-binding opinion on the patentability of the claimed invention. It provides the applicant with an even stronger basis on which to evaluate his chances of obtaining patents, and, if the report is favorable, a stronger basis on which to continue with his application before the national and regional patent Offices.

International publication

The International Bureau shall publish international applications. The international publication of the international application shall be effected promptly after the expiration of 18 months from the priority date of that application. The applicant may ask the International Bureau to publish his international application any time before the expiration of the time limit of 18 months from the priority date of that application.


Effects of the International Publication

As far as the protection of any rights of the applicant in a designated State is concerned, the effects, in that State, of the international publication of an international application shall, be the same as those which the national law of the designated State provides for the compulsory national publication of unexamined national applications as such.

The request for PCT

The request shall contain:

  • -a petition to the effect that the international application be processed according to International Treaty;
  • -the designation of the Contracting State or States in which protection for the invention is desired on the basis of the international application (“designated States”);

if for any designated State a regional patent is available and the applicant wishes to obtain a regional patent rather than a national patent, the request shall so indicate;

if, under a treaty concerning a regional patent, the applicant cannot limit his application to certain of the States party to that treaty, designation of one of those States and the indication of the wish to obtain the regional patent shall be treated as designation of all the States party to that treaty;

if, under the national law of the designated State, the designation of that State has the effect of an application for a regional patent, the designation of the said State shall be treated as an indication of the wish to obtain the regional patent;

  • -the name of and other prescribed data concerning the applicant and the agent (if any);
  • -the title of the invention;
  • -the name of and other prescribed data concerning the inventor where the national law of at least one of the designated States requires that these indications be furnished at the time of filing a national application.

Otherwise, the said indications may be furnished either in the request or in separate notices addressed to each designated Office whose national law requires the furnishing of the said indications but allows that they be furnished at a time later than that of the filing of a national application.

Every designation shall be subject to the payment of the prescribed fee within the prescribed time limit.Failure to indicate in the request the name and other prescribed data concerning the inventor shall have no consequence in any designated State whose national law requires the furnishing of the said indications but allows that they be furnished at a time later than that of the filing of a national application.

The description shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art.

The claim or claims shall define the matter for which protection is sought. Claims shall be clear and concise. They shall be fully supported by the description.

Drawings shall be required when they are necessary for the understanding of the invention. Where, without being necessary for the understanding of the invention, the nature of the invention admits of illustration by drawings:

  • – the applicant may include such drawings in the international application when filed,
  • – any designated Office may require that the applicant file such drawings with it within the prescribed time limit.

The international application may contain a declaration, as prescribed in the Regulations, claiming the priority of one or more earlier applications filed in or for any country party to the Paris Convention for the Protection of Industrial Property.

The international application for which the priority of one or more earlier applications filed in or for a Contracting State is claimed may contain the designation of that State. Where, in the international application, the priority of one or more national applications filed in or for a designated State is claimed, or where the priority of an international application having designated only one State is claimed, the conditions for, and the effect of, the priority claim in that State shall be governed by the national law of that State.