Allowances


1. Patents... In considering the strength or weakness of your position, those with whom you are dealing with respect to your patent rights should be invited to consider the following:

1.1 Lodgement of a patent application does not guarantee that a patent will be granted;

1.2 Action for infringement of a patent cannot be pursued prior to the grant of a patent;

1.3 Patent applications can be opposed and may be subject to amendment or other restrictions resulting from the opposition process;

1.4 Validity of a patent is not guaranteed and a patent may be revoked on grounds set out in patents legislation;

1.5 As it is not usually advisable to seek patent protection in every country of the world, there will be countries where the invention can be freely exploited;

1.6 The enforcement of patents varies from country to country for numerous reasons including local patent laws, the willingness or ability of administrations and legal systems to enforce patents rights, and the expenses of enforcement;

1.7 The patent laws of many countries allow the exploitation of patents by the State, or for State purposes, and in such cases a fair, or any, remuneration for the owner of the patent cannot be assumed;

1.8 The grant of a patent, much less the making of a patent application, does not necessarily mean that the invention will be a commercial success; and

1.9 The commercial exploitation of patents may depend upon the utilisation of third party patent rights, know how, or secrets which may or may not be available on acceptable terms or at all.


2. Designs... In considering the strength or weakness of your position, those with whom you are dealing with respect to your design rights should be invited to consider the following:

2.1 Lodgement of a design application does not guarantee that a design registration will ensue;

2.2 Action for infringement of a design registration cannot be pursued prior to the date of registration, or in some countries, the date of publication;

2.3 Design applications can sometimes be opposed and may be subject to amendment or other restrictions resulting from the opposition process;

2.4 Validity of a design registration is not guaranteed and may be expunged on grounds set out in designs legislation;

2.5 As it is not usually advisable to seek design protection in every country of the world, there will be countries where the design can be freely exploited;

2.6 The scope of protection and the strength of enforcement of design registrations vary from country to country for numerous reasons including local laws, the willingness or ability of administrations and legal systems to enforce design rights, and the expenses of enforcement;

2.7 The laws of many countries allow the exploitation of designs by the State, or for State purposes, and in such cases a fair, or any, remuneration for the owner of the design registration cannot be assumed;

2.8 The registration of a design, much less the filing of a design application, does not necessarily mean that the product to the design is applied will be a commercial success; and

2.9 The commercial exploitation of designs may depend upon the utilisation of third party intellectual property rights, know how, secrets or copyright which may or may not be available on acceptable terms or at all.


3. Trade Marks... Concerning trade marks, those with whom you are dealing should be invited to consider the following:

3.1 Protection against infringement of a trade mark can only be instituted if the trade mark is the subject of a registration;

3.2 Trade mark registration will not necessarily provide protection against the earlier use of the mark or a similar mark by third parties;

3.3 It is not usually advisable to pursue trade mark protection in every country;

3.4 Some countries have a "first to file" rule as opposed to a "first to use" rule, making it possible for other parties to file earlier trade mark applications in such countries ahead of you which may compromise your ability to use and register the trade mark in such countries;

3.5 Some countries have "compulsory registration" requirements and provide for the seizure of goods bearing trade marks which are not registered;

3.6 Trade marks are protected in the long term by use as well as registration and proper use of the trade mark will serve to maintain such protection;

3.7 Failure to pursue cases of infringement diligently can result in loss of trade mark rights;

3.8 The mere registration of a trade mark of itself will not maintain trade mark protection effectively if the trade mark is not used or not properly used — some countries require evidence of use to be provided to achieve and/or maintain registrations;

3.9 Inadequate control of the use of a trade mark on a global basis may result in the exclusive territorial rights of a licensee being circumvented by parallel importation of goods into the licensed territory.


2002 Bill Anderson