The Paris Convention for the Protection of Industrial Property (Paris Convention), which currently (October 2004) has 168 member states, guarantees that no associated state can treat citizens of other states of the convention less favourably than their own citizens (principle of national treatment). Moreover, it aims to harmonise industrial rights protection by defining minimum rights to which every citizen of an associated state can refer. Furthermore, associated states are obliged to provide particular IP regulations, such as for the protection of industrial designs. An important aspect of the agreement is the granting of a priority right for patent or utility model applications in all associated states. Accordingly, in the case of applications in associated states, the applicant can refer to the state-of-the-art of the first application with a duly filed invention application within a certain period of time, in this case within the next 12 months. This is essential for the required novelty of an invention. Today, the Convention's administrative tasks are carried out by the International Bureau of the World Intellectual Property Organisation (WIPO).

The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), completed in 1994, was agreed upon in the context of the convention for the creation of the World Trade Organisation (WTO) and is therefore (almost) globally enforceable. The contracting states (currently 132- October 2004 - among them EC States, the European Union as such, as well as the USA and Japan) have acknowledged the principle of national treatment. The agreement commits the contracting parties to apply the Paris Convention for the Protection of Industrial Property, even if they have not acceded to the latter. Moreover, TRIPs sets minimum standards for intellectual property rights which partly go beyond other international conventions, especially in patent law. It shall encourage technical innovation as well as the dissemination of technologies and technical knowledge for the society and economy. Therefore, the agreement also provides firm regulations for the enforcement of industrial property rights.

According to the European Patent Convention (EPC) (from 1973 a special association within the Paris Convention which currently has 28 contracting States (August 2004)), protection by a European patent may be achieved in one, several or all contracting states of the European Patent Organisation with a single application to the European Patent Office (EPO). After the patent is granted, competence is transferred to the designated states explicitly mentioned in the application (so-called patent bundle). The unitary term of the European Patent is 20 years from the filing date of the application. Even though the European Patent Convention contains a system of law common to the contracting states, the national law of the designated states is also applicable, because after they are granted European patents are treated as national patents. Therefore, any infringement of a European patent is dealt with by national law.

In the context of this treaty, applicants may claim the date of the filing of the European Patent (priority date) for the same invention for subsequent European or national filings, because the application is regarded as equivalent to a regular national filing. Vice versa, a duly filed national application in and for any associated state of the Paris Convention enjoys a priority right for the purpose of filing a European Patent application.

For further information, please refer to our briefing paper on "The European Patent and the Community Patent in the light of the new developments".

The Patent Co-operation Treaty (PCT) concluded in Washington in 1970 is a multilateral treaty with 123 contracting states (August 2004). The PCT allows an international application procedure ("international phase") as a preliminary stage to the national assignation process in the contracting states "designated" in the international application. The international application procedure has the same effect as a national or regional (e.g. European) application, including the priority of the date of application. International patent applications can be filed with each National Patent Office "acting as a PCT-Office" or with the International Bureau of the WIPO. Where a PCT Contracting State is party to a regional patent treaty, such as the EPC, the regional office is the designated regional office (other regional patents can be obtained from the ARIPO Office, the Eurasian Patent Office, or the OAPI Office).

While the application procedure follows the PCT status, the granting procedure ("national phase") conforms to national / regional laws of the states designated in the application. One can connect the granting procedure for the European patent at any time with the parallel acquisition of patents under the PCT System. This procedure is known as the Euro-PCT-route.

In the field of European community law, no complete codification of intellectual property rights has occurred. Although the European legislator has made a number of attempts to harmonize the law regarding technical inventions, the success of this thus far is questionable. For example, the Directive on biotechnological inventions has not been implemented by many EU member states (despite a deadline of 30th July 2000). National laws, however, are to be interpreted in light of Community law, especially the regulations on the Common Market. The principles set out in the European Community Treaty regarding the free movement of goods and services and the freedom of competition, as well as the guarantee of protection of "industrial and commercial property" - as a grounds for justified restrictions on imports, exports and goods in transit in the Common Market - among others, constitute the legal framework which must be taken into account when applying national IP regulations. The European Court of Justice secures the uniform application and interpretation of Community law by the Member States and their institutions and therefore contributes to a substantial harmonization. It should be noted that the Court has no competence to interpret conventions not concluded within the EU framework, such as the European Patent Convention, for example.

Of interest in the context of the European Community is the Luxembourg Agreement concluded in 1989 between the then 12 EU Member States. It refers to the European Patent Convention and to the Convention for the European Patent from 1975, which attempted to establish a unitary EU-wide patent. The Luxemburg Agreement aims to bring these endeavours forward for a barrier-free patent system in the EU. However, both of the agreements never became effective. As a consequence of this failure, the EU is currently working on the adoption of a Community Patent by means of an EU Regulation which, however, seems to encounter mainly the same difficulties.

The rules for participation in FP6 projects and the EC Contract oblige the participants in indirect measures to provide for the legal protection of research results which are capable of industrial or commercial application. This protection has to be "adequate and effective". The rules for participation in FP6 projects were issued as a Regulation by the European Parliament and the European Council and thus have direct validity in all Member States.

The duty to protect only concerns the participants' knowledge. Knowledge is the information gathered within the context of the research activities of the funded project, and in addition, protection rights relating to that information. Information can, among other things, be a technical invention made by one or several partners. The rights attached thereto are, for example, patents and utility models.

In the event that a technical invention results from the research activities, the partner concerned should consider filing a patent or utility model application, because it is obvious that this kind of protection could be considered the "adequate" form of protection for such information.

However, patents and utility models are a right granted by a state and thus submitted to the applicable national laws. The official act of assigning the patent or utility model constitutes the protection of the invention. The assignation only has legal effect in the territory the protection is granted for, and not in other states' territory.

This principle of territoriality in industrial property law has the consequence that the inventor has to apply for several national patent registrations that all depend on national law, or he has to file an European Patent application or an international application designating all the states where protection is sought if he wants to profit from the patent protection in all target markets.

Furthermore, the acquisition of rights and the extent of the protection are always determined by the national law of the state where protection is desired (state of protection). A choice of law is impossible. Clauses of the EC Contract and the consortium agreements, which usually determine the application of Belgian or Luxembourgian law, are not relevant for questions concerning the application, granting or violation of patents or utility models. As regards these issues, the national law of the state of protection concerned is the applicable law.

According to the principle of independence, all patents that were registered for one invention in different territories have an individual fate. Only national courts decide on patent disputes; a common jurisdiction is still missing. This might lead to controversial decisions concerning protection rights, even when they concern the same invention. On the one hand, courts have to apply different national laws, on the other hand they might interpret the provisions of appropriate international agreements in different ways.

If an employee working for a participant of an indirect action makes an invention in the context of a project financed within the FP6, due attention has to be paid to special (national) regulations as far as rights to knowledge are concerned. The question of how employees' inventions have to be treated, may - as long as explicit regulations concerning this topic exist in the national legislation - be regulated under the national law on labour or intellectual property rights. In France, Greece, Ireland, Luxembourg, the Netherlands, Austria and Spain, for example, the relevant legislation (like patent or utility model acts) contains regulations concerning employees' inventions. Corresponding regulations are missing under Belgian law.

Basically, the employer has a legitimate interest in inventions which can be protected by patents or utility models made during the time of the employment if they are based on either the employee's usual work or the employer's experience (so-called service inventions). All other inventions are 'free inventions'. In some states such as Great Britain, the employer is the original owner of the relevant service inventions. However, in many states, the ownership of a service invention initially belongs to the inventor himself. Some national laws provide that the rights are implicitly transferred to the employer by law or the employer can claim the rights. In Germany, a specific act (the German "Arbeitnehmererfindergesetz") regulates the relationship between employer and employee with regard to inventions made by the employee. According to that regulation, the employee has to offer the invention to his employer. The employer has the right to make use of the invention and apply for a patent. In return the employee is rewarded compensation. Denmark, Finland and Sweden have similar regulations in their legislations.

In any case, each participant in the FP6 is obliged to take all necessary steps as regards its employees in order to be in a position to comply with the obligations it has assumed by signing the EC Contract. First of all, (written) agreements, either separate or in the associated labour contract, ensure that the rights pertaining to an invention which could be protected by a patent or utility model can be exercised in a manner compatible with the participant's obligations under the Regulation and the EC Contract (Art. 21 (5) rules for participation). Those agreements should not only be made with employees, but also with external workers who make inventions in connection with contracts for work and labour (subcontractors, commissioned works) or by other ways connected with the project. For example, non-employed doctoral candidates at universities are usually the rightholders of their inventions. Though in those cases there could partly be an implicit transfer of rights to the employer, to prevent legal uncertainty it is recommended to use written agreements which precisely define the extent of the transfer to be reached. In some Member States, employed scientists are entitled by law to use their own inventions in any case, for instance, in Italy. Also, in these cases it is advisable to punctually conclude (written) agreements on the transfer of rights.

Please also refer to our "Guide on employees' creations".

Under Art. 52 (1) EPC, only inventions that are new, based on an inventive step and industrially applicable can be protected by a patent (e.g. mechanical engineering, electronic, chemical and physical products, or procedures). For a limited time, the patent provides its owner with a positive right to use the protected invention (in manufacturing, offering for sale, putting on the market or by using the subject matter of the patent) and a right to prevent third parties from handing over or using it without his permission.

A utility model is a form of legal protection of technical inventions. It confers to the utility model owner an exclusive right, i.e. it authorizes the owner to prevent third parties from using the protected invention, manufacturing or placing it on the market without the consent of the utility model owner. As for patents, the invention must be susceptible of industrial application. All other requirements for granting a utility model differ much more in the single EU-Member States than those for a patent. A couple of states (Great Britain, Luxembourg and Sweden) do not have this kind of protection at all.

Utility model protection in the narrower sense exists for example in Germany, Austria, Spain, Italy, Portugal, Greece, Finland, Denmark, Poland, the Czech Republic, and Estonia. This kind of protection covers "smaller inventions", e.g. industrial products with less industrial complexity, or simple further developments of already known inventions. This is because most national laws require a lower level of inventive step. The extent of protection is the same as for patents, but conversely, the duration of protection is shorter. Protection by utility models for inventions that consist in procedures is excluded in almost all the EU-Member States (Germany, Spain, Finland, Czech Republic). In Austria, for instance, software / program logics can explicitly be the subject of a utility model whereas in most other states these subjects are excluded from utility model protection. Some states, for example Poland, require that the invention has a "useful function" for protection to be granted.

As a basic requirement, utility model protection requires the invention to be novel as well. However, in some states the necessity of absolute novelty is on a lower level. In Spain, for example, novelty is only judged according to national state-of-the-art. The German utility model law states that the invention is not novel only where it is already described in written form or was made available by domestic usage inside the country's borders. Furthermore, in Germany, Austria, Hungary, and the Czech Republic, there is a six-month period within which the inventor can file an application despite the previous disclosure of his or her invention ("grace period").

Different Member States (Belgium, the Netherlands, and Slovenia, for example) do not provide utility model protection as such; however, one can claim comparable protection in the form of a "short term patent". This guarantees the same rights as a real patent, but is granted in a simplified procedure and, thus, is cheaper and can be assigned much more quickly. A similar protection form is the "certificat d'utilité" in France - a sui generis short term patent. As for other short term patents, the substantive granting requirements are the same (strict) as for patents: novelty; an inventive step; and capability of industrial application. The Irish "short term patent", in contrast, is a patent granted for a shorter period of time (10 years) on products and processes but the requirements regarding the quality of the inventive activity are not as strict as for a patent.

The decisive point in time to determine priority rights is also at application.

Protection for an invention is therefore possible - if patent requirements are fulfilled - either by a patent or a utility model. In almost all countries, there is a link between patent and utility model protection, e.g. one can transform a patent application into one for a utility model; or a parallel application is allowed whereby the utility model will be registered if no novelty search has been carried out; or the patent fee is not paid by the applicant (France). A utility model may also be used to bridge the long time it can take for a patent to be assigned (Germany, Austria).

For further information, please refer to our briefing paper on utility models.

According to the participation rules, participants are obliged to provide 'adequate and effective protection' for knowledge that is 'capable of industrial or commercial application' (Art. 22 (1) ). As regards the protection of technical inventions, the choice of an adequate protection measure must take the following points into account.

Advantages of utility models Disadvantages of utility models Requirements are easier to fulfil Usually lower degree of inventive step In some countries, there are lower novelty requirements Less strong position of the right holder in infringement and nullity proceedings (legal uncertainty) Simple registration procedure: Quicker protection Methods / procedures cannot be protected in almost all the EU-Member States Cheaper than patents Utility models do not exist in all EU Member States Shorter term of protection for utility models: It depends on the kind of invention and the planned exploitation on a case-by-case basis whether this is considered as an advantage or disadvantage. For example, some inventions do not need 20 years protection as it is foreseeable that they will become obsolete for the market within a shorter time.

The rules for participation contain the fundamentals for the protection and use of intellectual property. These were issued by the European Parliament and the European Council as a regulation and therefore have direct validity in all Member States. Details are determined in the project and consortium agreement or any other specific agreements. Inventions capable of protection by property rights are (amongst others) the results of indirect actions, which are referred to as knowledge. In addition, issued patents and utility models are defined as protected knowledge (Art. 2 No. 22). In the participation rules, it is determined that knowledge arising from work carried out under indirect measures is the property of the participants carrying out the work leading to that knowledge (Art. 21 (2)). Through this, the ownership of knowledge is assigned to the participant but this does not mean that the participant can claim the property right on the grounds of the rules for participation. The allocation results first of all from the general (national) regulations concerning intellectual and industrial property rights.

Knowledge generated under cooperative and collective research projects is (just like in FP5) in all cases the joint property of the SMEs or enterprise groupings, for which the RTD performers have carried out the work. The allocation of the ownership of such knowledge and the details for exercising these rights are to be agreed on by the participants in accordance with the participation rules and the EC contract (Art. 21 (4)).

Intellectual joint ownership typically arises from the work of two or more persons, as far as the results are based on collaboration. Normally the persons concerned share the property right pro rata. Every joint owner is entitled to assign his or her share to third persons, but where the property right is concerned as a whole, he or she needs the consent of the co-owners. For example, he or she cannot, without the consent of each other co-owner, enter into contractual agreements such as a license. These rules relating to joint ownership and property rights in general are engrained in the Member States' legal systems. The FP6 participation rules repeat that legal status by stipulating that jointly created assets shall be owned jointly (Art. 21 (3)). Thus, the ownership of knowledge (project results including information, copyright and industrial property rights) only belongs to the participants collectively where it is not possible to ascertain which partner generated the respective share of the work (joint ownership). In contrary to the FP5 system, joint ownership is mandatory in these situations.

National courts try to soften the sometimes severe consequences of this obligation and apply rules that are more in line with the parties' supposed interests. In particular, where the parties' contributions have been grossly disproportionate, courts recognize a majority of owners as a civil partnership. Accordingly, the distribution of any profits from a patent is allocated with a view to the partners' contribution. By means of contractual agreements, however, arising conflicts should be avoided in advance and the allocation of ownership of jointly created assets can and should be contractually tailored to the respective needs of the parties (for example, the profit-sharing for the exploitation by selling a patent, sharing license fee income, etc.). For the allocation and the exercising of the rights, the participants have to reach agreements among themselves. A stipulation in the consortium agreement is therefore suitable.

If several entities are joint owners of a patent / utility model, every person will have the possibility and right to jointly use the invention. In projects within FP6, heterogeneous groups such as enterprises of different size, universities, research centres, etc. work together. It is advisable for the participants to agree on rules in case of the joint ownership of knowledge and to adjust the property in inventions to their individual conditions and situations.

Please note also our "Joint Ownership Guide".

Regarding inventions made by more than one person, one speaks of co-inventorship. In order to be considered as a (co-)inventor, at least a mental contribution and the use of a person's own initiative in solving the problem are necessary. However, not all prerequisites of an invention must be met by the same person; for example, the person who produces the impulse for an invention can be regarded as an inventor. According to the national regulation of many states, only natural persons can be an inventor under the law, not enterprises or research entities the person works for. Mostly the rights to the inventions made during work time are legally allocated to their employers on the basis of the national law of the employees' who have made the inventions. For the rest, the participants must take steps or reach appropriate agreements to ensure these rights can be exercised by them (Art. 21 (5)).