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Industrial ownership is already protected at the European level

Motto:

"The recognition of ethic and economic value of brainwork in cultural, social, and economic development of nations is the principal goal of intellectual property. "

With these words, the late WIPO general manager, Mr. Arpad Bogsch, launched the symposium of the World Institution of Psychical Ownership (WIPO) at the Louvre museum in Paris, on June 1994. There are very few other legal disciplines that can call to a higher sense of being. Intellectual property has one quality that makes it different from other law branches: Its aim is not to regulate relations among subjects, as is the case of corporeal property, delinquency, contract, competition regulations and commercial or criminal law, but its focus is to award the author, and to support economic and technical progression.

Industrial ownership, such as invention rights, industrial design rights, utility design rights, trade mark rights, the rights of solid-state product topography, and appellation of origin, is a part of the intellectual property with all of its attributes. The industrial property rights are also regarded as a legal substance, which helps in achieving commercial and industrial political goals. Property rights secure the safety and freedom of the circulation of goods, outside of the national market. The protection of this ownership has a long-term tradition in our country, similar to the continental, and closely resembling the German system. The Czechoslovak Republic has already had an advanced legislation aimed to protect individual subjects of industrial ownership by means of both private and public law: the establishment of the Patent Office and the Patent Court date back to 1919, and until 1939, the important legislation relate with this protection has also been endorsed and administered. Since 1919, the legal predecessor of the Czech Republic has been a member of many important universal and special international treaties, within the field of the protection of industrial ownership.

By 1989, this past tradition has had an indispensable significance with the transformation of the industrial ownership protection legislation. This protection act has undergone dynamic progression in past ten years; after the disestablishment of the admin-directive way of the economy, it was necessary to adapt the concept of the entire system. The conformation of industrial-legal protection to the conditions of market economy appeared as a condicio sine qua non of another successful development. In essence, it was a return to tradition, and the transformation was quick and relatively problem-free. Early in the nineties, a couple of legislations in this area have been quickly accepted. These legislations were set to the legal system of the Czech Republic after the abolishment of the federation. The Czech Republic was the first post-communist country responding to the new economic-political conditions, and promptly matched the state of a patent protection, with the needs of market economy. This first stage took five years. The second stage started in 2000. Let’s enlarge the individual stages.

Patents for inventions – the first swallow

The acceptance of the patent law in 1990 was the first act. Above all, this act rehabilitated the exclusive patent protection of inventions, and cancelled the principle of non-exclusive protection by the means of the author’s certificate. This legislation adjusted the conditions of invention patentability, the duration and effects of the patent protection, and all the regulation of material as well as procedural law, to match the similar standards of the European Community member countries, or the measures stated in the European Patent Pact. The disestablishment of the prior exclusion of pharmaceuticals, chemical products, food, and industrial production microbes from patentability was another important change. By the way, the Czech Republic, once again, was one of the first states to implement the patentability of pharmaceuticals by the early nineties. Although this legal regulation is called “the patent law”, it originally governed the exclusive design protection (product design) as well. This part was cancelled by 2000 and was replaced with the special industrial design law (vide infra). The patent law came into force by January 1st, 1991, and represented a modern legal regulation conforming to the European standard. The need of the legal regulation update has become as a result of some events during the nineties.

Topography of solid-state products – "two flies in one blow"

On the 1st of January 1992, the protection of solid-state products topography regulation has come into force. The history of a special protection of the solid-state products topography, so-called chips, is relatively young. Chips started up in 1958. The first act following the protection of solid-state products topography was the American act from 1984. Later on, other states started to bring out similar regulations. In December 1986, the direction governing the legal protection of solid-state products topography has been accepted aiming to coordinate by the rules of the European Community member states. The acceptance of national regulation has later transformed into an obligation resulting from the Agreement on Commercial relationships between USA and CSFR, which concluded in 1990. At the same time, it represented the coordination of our legal regulations with ES regulations. This legal regulation was processed with the knowledge of ES regulation and is fully compatible with it.

The configuration of a solid-state product is an object of the protection in its widest conception. The important condition requires that the object must be a result of creative activity, and its solution must be individual. The topography is under exclusive protection. The topography, or part-there-of, cannot be reproduced without the consent of the owner, nor the solid-state product with content of the topography can be produced. The protection doesn’t apply to reverse engineering (everybody has the right to subject the chip to analysis and evaluation) and to the so-called “innocent usage” (the usage of the solid-state product by a bona fide processor).

Utility designs – a protection which some EC member states do not endorse yet

After the acceptance of the Patent Act in 1990 the need to fill the gap has appeared. This gap was among patentable inventions with a high rate of creative invention and smaller technical, manufacturing and operational improvements, that can be protected by the improvement suggestion. Many neighbouring states solved a similar problem by an implementation called utility design. Utility designs are mostly assumed as a registered law providing an exclusive protection to technical inventions, and specifically to those having a shorter operating life, or whose rate of creative invention is relatively lower. Due to its properties, utility designs conform very well to the needs of small and middle size companies.

For this reason, the Czech Republic has implemented the specific protection of technical solutions by the acceptance of the utility design act in 1992. To date, utility design protection hasn’t been harmonized within the European Community. It exists only at a national level of most – but not of all – EC member states. The European Commission is preparing a direction proposal for the coordination of these regulations. The German utility design act has been used as a model during the preparation of Czech utility design act. This solution turned up predictive as the publication of the ES regulation proposal shown that the protection of utility designs went in the right direction.

Trademarks – systematic harmonization

Trademarks make a great difference in a modern world. The identification of an origin of products and services, high quality provision, and representation of goodwill are only some of a trademarks’ function. The trademarks act as an important identification and a guarantee feature for the potential customer.

The European Community has achieved the harmonization of its member states regulations relating to trademarks in 1988, in the form of the adaptation of harmonization direction. Its aim was to remove existing differences of national regulations of member states and thus contribute to free circulation of goods, and the freedom to provide related services. This direction includes a demonstrative specification of marking that can make a trademark (words, drawing, form of product), to be able to differ products or services of one company from the other. It also stipulates the reasons for a rejection of a trademark, or its defeasance resulting from a character of the marking (for example, due to a descriptiveness), or due to a contradiction with other laws. The protection level arising from the trademark registration in various member states is a governing element of the harmonization. Therefore, the protection level is the same all over the European Community nowadays.

The trademark act of 1995 has fully adopted the above-mentioned principles. This legal enactment had also other objects. Above all, it removed all constrictions in the trademark treatment that since then were affected by state administrative intervention with the position of individual economic subjects. It brought a better position to a trademark owner, as well as a higher responsibility of other economic subjects for marking products and services. By the implementation of a proceeding before trademark is registered to the statutory register, (thus provides for the protection of third party rights) the act was governed by the conception of trademark protection in the EC law. The harmonization of absolute and relative reasons for the trademarks’ registration refusal, or to its deletion (with reasons stated in the harmonization direction), was already a matter-of course since the process of harmonization of the national legislation with EC law has been already fully and deliberately taking place during the preparation of the act. The first phase of transformation of the industrial ownership protection system in the Czech Republic has been basically complete by the acts’ application in the mid nineties.

European treaty and additional protective certificates

The patent act of 1990 was accepted relatively soon after the transformation of the Czech Republic to market economy. The necessity of a flexible reaction to the new situation, and the recovery of the legal patent system as soon as possible, were the main reasons for its adoption. No acquis communautaire existed through the field of the patent law in 1990; therefore, the authors of the act were naturally inspired by the patent laws of other European states, as well as by the European patent treaty. Due to some events, the law had to be updated over the nineties. At the same time changes to the trademark, utility design, and solid-state product topography acts have also been introduced.

The European treaty came into force on 1993, and with its paragraph 67, brought more responsibilities. The first being the constant improvement of the industrial ownership rights protection act, with a request to match the level of other members of the European Community by the end of the fifth year following the treaty’s validation date. Another responsibility was to request a consent for participants of the European patent treaty. Apart from generally formulated obligations leading to the compliance of the Czech regulation to acquis communautaire as stated in paragraph 69 of the European treaty, the necessity to follow up with the protection level within the European Community and keep complying with it, also aroused in the field of industrial ownership.

As a result, before the Czech Republic were to join the European Community, certain measures regarding common industrial ownership were needed to be introduced; most specifically the protection complying with EC standards with its related effect and duration. In 1992, the European Community established a protective institute new to our legal system, representing additional certificates for pharmaceuticals. The EC has also licensed similar certificates for products regarding plants protection since 1996. These certificates were basically used for the prolongation of validity of patents for products or manufacturing technologies. It is common knowledge that pharmaceutical and phytosanitary products must be subjected to long-term tests for verification of safety and side-effects, before becoming available to the public. Although the related patent is already valid throughout this test duration, its owner cannot realize his privilege and thus cannot regain money spent on research and development. Nevertheless, the investments to this industry are extremely high. That’s why the owners of such patents felt underprivileged with their rights. Many states took special measures to set the situation right, such as the expansion of pharmaceutical or phytosanitary products patent protection, or its additional protection. The implementation of additional protective certificates to our legal system has been one of the reasons for updating of the patent act.

The European Patent Treaty and its impact on national law

The European patent treaty isn’t a part of acquis; it is a regional treaty that at this moment substitutes acquis. All of EC states and some others, are members of this treaty. In 1996, the Czech Republic asked for consent to join the treaty, and since then conformed to membership qualification within the European patent organization. In 1999 the Czech Republic was invited to the European patent organization taking effect from 1.7.2002. However, the invite’s condition was that the candidate shall duly accept and implement measures to connect the European patent system with the national system. The treaty integrates into national law so deeply, that some regulations necessary for the complete system to function are required of national regulation. The member states have specific discretion methods for solving inter-state matters: such as required translations of European patents to their native language, the national authority’s acceptance of European patent applications, and so on. The necessity to support these requirements was the second reason for the update of the patent act.

The treaty on commercial aspects of rights of intellectual property (TRIPs) and enforcement of rights

In 1996 the Treaty on commercial aspects of rights of intellectual property (further only “TRIPs”) was introduced at the Czech Republic. It is an important universal treaty concerning not only industrial ownership, but also the protection of unpublished information. It is worth mentioning that the TRIPs pays great attention to means of adherence to rights. It must be noted here, that our legal regulations absolutely satisfied the statutory aspects of industrial ownership protection for individual subjects, as the Czech Republic provides similar protection to all named subjects. However, this wasn’t the case with the conditions for conferment of compulsory licence to patents, and for some aspects of rights enforcement. The patent act nor the trademarks act till now, have explicitly governed the competence of a patent’s or trademark’s owner to request damages of subjects whose production or marketing infringed the owner’s rights. This was the third reason for the update of the patent act, and the reason for the expansion of the trademarks act.

New acquis – industrial designs and biotechnologic inventions

The European Community hasn’t dropped behind, with its development of legal regulations in the area of industrial ownership. In the late nineties, two new directions came into force. The Czech Republic, aware of its obligation to article 67 of the European treaty, as the first of the candidate countries, managed to include this acquis to its legal regulations, even before other EC member states.

The European Community accepted the direction of biotechnological inventions legal protection after a multiyear discussion concerning the ethic aspects of biotechnologies and genetic engineering. One of its goals was to clarify the scope of the legal protection provided to biotechnological inventions, and thus, give support to investments to the area of biotechnologies. The second goal was to assure the harmonization of legal regulations regarding the patentability of biotechnological inventions within the European Community and to ensure that the patent authorities will use standardized criteria for the license of protection. The European parliament has clearly showed its support of the European bio technologic industry by the acceptance this direction.

The transposition of the direction to our legal system has been made with the effective date of October 1st, 2000, by a special act called the biotechnological inventions protection. This act both concurs and supplements the patent act. The act confirms, that the inventions that conform to usual conditions can be patented even if they include biological material. In compliance with the direction, the act excludes the methods of prolific cloning of humans and procedures related to a human embryo. The act endeavours after a reasonable solution of the problem, if and when it is possible to patent animals. The methods of modification of animal genetic identity, by which the animal can suffer without an essential benefit for the medicine, and also the animals that are a product of such method, are excluded from patentability. In these cases the act adopts the principles embodied within the direction.

Let’s glance at the industrial designs briefly. The part that includes the legal regulation of this industrial ownership subject, was originally included in the patent act of 1990. Till 1998, it seemed that this design wouldn’t need any updates. In 1998 the ES direction regarding the protection of designs came into the force. This direction embodied some points yet unknown to our legal system. The acceptance of a new industrial ownership act seemed to be more pragmatic, instead of an additional update of the patent act. This new act was introduced on 2000, with a newly introduced condition of design protection: an applied design must not only be new, as it was till now, but also must satisfy the claim on a singular nature. As with the case of transposition the ES direction of design protection, the Czech Republic has overtaken other member states.

The specification of the rules related to the protection of individual subjects of industrial ownership is summarized by act no. 452/2001Sb. – The act of appellation of origin and geographic indication protection came to the force on April 1st, 2002. This act replaced the nearly thirty years old legal regulation in order to comply with TRIPSs and ES law requirements in this field.

Other memberships of the CR in international treaties

The Czech Republic traditionally is a member of a number of important international treaties or agreements for industrial ownership protection. These are basic treaties, which simplify the obtaining of protection of individual objects in other states, or treaties governing international classification of these objects. The Czech Republic “inherited” a membership in most of these treaties from its legal predecessors. This reflects the long-term tradition of industrial ownership protection in the Czech Republic territory, which dates back to 1919. On the other hand, the Czech Republic has recently accepted a substantial count of new treaties. It proves our dynamic ability to take over new obligations in the interest of international cooperation. Among these “modern” treaties, are the above-mentioned TRIPs (since 1996 in CR), the Patent Cooperation Treaty (in the area of patent protection, since 1991), the Protocol of the Madrid Convention of International registration of trademarks (in the area of trademarks protection, since 1996), and the Treaty of trademark law (since 1996). The joining of the Czech Republic to the Haag Convention of international registration of industrial designs and models is currently being considered. The acceptance of the Czech Republic to the European patent agreement took place on 1.7.2002. The cooperation with the Organization for harmonization in the home market (OHIM), under the authority of the European Community for trademarks, has been initiated in the late nineties

The process of adoption of acquis communautaire and Europeanization of the industrial ownership protection is basically complete in the Czech Republic. All relevant EC regulations in this area have been already transformed to our legal system, in some case, even earlier than some member states of the EC. By the joining of the Czech Republic to the European patent agreement, article 67 of the European treaty has been completely fulfilled.