Patents and Utility Models

The cost of patent protection can depend on many factors — from the complexity of the invention to the territorial coverage.

If you are interested in a Czech patent, the costs are usually in the range from 40,000 to 100,000 CZK until the patent is granted, after which annual maintenance fees are paid to keep the patent valid.

Protection abroad can then mean additional costs of hundreds of thousands of crowns, depending on the breadth of territorial coverage, of course.

Patents are granted for inventions that are new, economically exploitable and have been created by inventive activity.

The best way to check that these conditions are met is to perform a so-called patentability search. If you find out in time that your solution cannot be patented, you will save the costs otherwise spent on preparing a patent application that would eventually be rejected by the patent office.

Typical examples of inventions you can patent are new products and technologies, manufacturing processes, chemically produced substances and pharmaceuticals. By law, you cannot patent, for example, scientific discoveries or theories. However, the use of this knowledge in a particular technical application may already be patentable.

When securing a patent, it’s not only about when you obtain it, but also about when you file the application. As of that date, the patentability of other solutions on the market will be assessed. Plus, approximately 18 months from the filing date, the application will be published, and you’ll be able to enforce the patent.

The length of patent proceedings is typically in the order of years, and can vary significantly from case to case. It depends to a large extent, for example, on how well and professionally the patent application has been drafted or on similar documents that the patent office finds during its examination.

If you are interested in the fastest possible protection, you may be better suited to file a utility model application, which usually takes several months to process.

The patent will be valid as long as you pay the annual maintenance fees, but for no more than 20 years from the application filing date. An exception may be so-called supplementary protection certificates, which serve to extend patent protection for pharmaceuticals or plant protection products for 25 years.

There is no such thing as a “worldwide patent”. Each patent is valid only in the specific territory where it was granted and where maintenance fees are paid.

If you are interested in protection in more than one country, you can file a single international application using the PCT system, but even in this case the decision to grant a patent will ultimately be made by national IPOs.

Various regional patent systems, such as the EPC system for obtaining a European patent, can also help you to seek protection in more countries around the world.

When expanding abroad, we’ll assist you in designing a protection strategy aligned with your business goals and financial capabilities.

A patent is valid in the countries where it is granted under the patent proceedings therein. Some countries are part of supranational patent organisations that unify patent proceedings for member countries.

For example, the Czech Republic is a member of the European Patent Organisation, and a European patent can be valid on our territory without going through the Czech patent procedure.

You have 12 months from the application filing date of your patent or utility model to file applications abroad. If you file a PCT international patent application within this period, the time for filing continuation patent applications abroad will be extended by approximately 18 months.

In total, you may have approximately 30 months from the application filing date to decide which territories to seek patent protection in.

If you miss these deadlines, you lose the opportunity to obtain protection in other territories. The applications are then examined separately, and the later ones do not meet one of the basic conditions of a patent — novelty.

Certainly.

No improvement is too minor if it has a technical effect or solves a technical problem. In particular, it depends if such an improvement is new and not obvious from the known state of the art.

In almost every patent proceeding, the Office returns the application with an official notice (reproach). It is necessary to respond to this notice and to present arguments to the Office as to why the proceedings of the patent application should continue.

We therefore recommend that you use the services of a patent attorney who will check whether the application meets all the formal requirements and conditions of patentability with respect to the documents objected to by the Office. Among other things, they will also check whether the claimed scope of protection is set correctly and suggest further steps.

However, in the case of unprofessionally prepared applications, the only solution is often to withdraw the current application and file a new one. Nevertheless, this is not possible in cases where the invention has already been disclosed in the meantime.

In the first instance, we recommend that you engage the services of a patent attorney to investigate whether the allegation of infringement of the patent in question is justified. If so, possible next steps include a licensing agreement with the rights owner, circumventing the patent by modifying the technical solution or attempting to revoke the patent.

Otherwise, it is appropriate to reply to the patent owner with the reasons for this view. If the owner nevertheless decides to enforce the rights, the competent patent court will decide.

Before taking the legal route to enforce your rights, it is advisable to first inform the infringer by registered letter and start negotiations with them or offer a licence.

You can also choose a qualified mediator to guide the negotiations towards an agreement, or Industrial Property Office of the Czech Republic can offer to provide its opinion on whether a particular subject matter falls within the scope of a given patent. If you still cannot reach an agreement, you must enforce your rights through the courts.

To avoid such a situation, it is advisable to carry out a search during the development or before the product is placed on the market and to check both the industrial and legal integrity of the technical solution, the design and preferably the title.

Innovations and technical solutions can be protected by a patent or a utility model if they meet the respective criteria.

Names, logos, colors, and other designations (signs or brand symbols) can be protected with a trademark, while the appearance of a product can be safeguarded with an industrial design.

Aspects not easily recognizable in the product itself can be protected as trade secrets.

Even before launching sales or introducing your product to the public, it’s essential to check whether your product meets the conditions for various forms of protection. If you’re unsure, we’ll help you navigate through them and choose the most suitable path.

If the product has already been disclosed, for example by sale, it is still possible in some countries to obtain protection for the technical solution during the so-called “grace period”.

You will no longer obtain a patent, but you can apply for a utility model in the Czech Republic within 6 months of publication.

For design, protection can be obtained for up to 12 months after publication.

Utility models are used to protect technical solutions, similar to patents. The scope of protection arising from a utility model is defined in words called claims for protection.

In contrast, industrial designs are used to protect the appearance of a product, not its technical substance. The scope of protection is determined by the representation of the industrial design.

The best practice is to have a patent application, utility model application or industrial design filed before you provide details of the solution to potential investors.

If the application has not yet been filed, it is advisable to sign a non-disclosure agreement (NDA) with the investors.