Inventions and utility models (EU-EPO)

Invention/utility model is the result of human creativity in any field of technology.

Invention protects following objects: product (device, substance, microorganism strains, cell culture), process (method), application of a known technical solution for a new purpose.

Criteria of patentability for the invention: novelty, inventive step, and industrial applicability of the claimed technical solution. Inventive step criterion is met if a technical result achieved by adding new features to the previously known technical solution is not obvious for a specialist.

The object of protection under utility model patent in most countries with some exceptions can be a product only.

Criteria of patentability for the utility model: novelty and industrial applicability of the claimed technical solution. In some countries however, an inventive step is also checked. For the list of countries where protection for utility models can be obtained click here.

Invention/utility model registration is necessary to obtain the state-guaranteed privileges to use, including the enforcement of the right to prohibit the use of such intellectual property asset by third parties.

Both individuals and/or legal entities may be the holders of the property rights for invention/utility model. Property rights for invention/utility model may simultaneously belong to several legal entities and/or individuals. However, non-property rights remain with the author / authors of invention/utility model, it can’t be alienated and is subject to permanent protection.

The title of protection for registration of the invention is usually a patent. When registering a utility model in some countries certificate is granted.

The territory covered by the protection of the registered invention/utility model is always indicated in the title of protection. It may include one or several countries.

Invention is valid during 20-25 years, while for utility model validity term is 10-15 years depending on the country (if relevant official fees are paid periodically).

Important to remember: it’s better to invest into protection of your original invention/utility model before goods are introduced into the market than to spend significantly more in future to protect your products from unfair competitors and intellectual property dealers.

The European Patent Office (EPO), headquartered in Munich (Germany) and The Hague (Netherlands), grants only patents for inventions. Patents are granted on the basis of substantive examination (examination system). This means that (EPO) examines the application for compliance with the formal and absolute criteria of patentability.

A patent can be obtained directly by filing an application to EPO or by transferring the PCT application to the regional phase.

The package of documents required for filing an application includes the description and claims of invention, which are usually formed by a patent attorney.

The maximum validity term of a patent is 20 years. Patent maintenance fees are paid annually in each of the countries in which it is valid.

A European patent, under certain provisions, is valid on the territory of 38 contracting parties of EPC and in some other countries with which EPO has bilateral agreements, and has the same status as national patents. More information about the procedure for obtaining a European patent can be found here.

The Bureau’s office in Sofia files applications to the EPO directly and controls all stages of prosecution under European procedure.

We also offer Freedom to Operate (FTO) searches.

Before launching a new product in a particular territory, it is very important to make sure that you will not be infringing the existing rights of another party, as committing patent infringement can be extremely damaging to your business. A patent holder could stop you from making and selling your product in the relevant territory - this would make the investment into the product worthless and disrupt your business plan. In addition, you might be liable for significant damages and may also have to incur significant legal expenses.

A Freedom to Operate (FTO) search is the best way to identify any potential issues in advance and minimise the risk of committing patent infringement. While it may not be possible to have a 100% guarantee of FTO, the more thorough the search, the more information and therefore certainty, you will have for your product. This applies equally for products which have not been patented, as well as for patented inventions - having your own patent does not remove the ability of other parties to sue you for infringement.

Dr. Emil Benatov & Partners offers FTO searches and risk analysis in the fields of pharmaceuticals, food and beverage, cosmetics and chemistry for the territories of Europe and United States. Our team will help you obtain some certainty for your business decisions and give you the ability to more confidently proceed with your investments. We will examine your business circumstances and offer you the particular service most suited to your needs.