Multinational Applications

Recently, there have been a number of significant additions, and proposed additions, to the lists of member states of various "multinational" intellectual property treaties and conventions. These "multinational" treaties and conventions allow intellectual property protection to be extended beyond the UK. This article reviews the various types of application in light of the recent and/or proposed additions.

Extending rights into Europe

1: Patents

Patent applications may be filed in Europe under the European Patent Convention (EPC). States become members of the EPC by acceding to the convention at the invitation of an Administrative Council, and a number of rules are in place to regulate the member states.

Member states must be designated by an applicant when making his application. The applicant can choose to designate between 1 and 6, or all of the member states signed up to the EPC in a European patent application.

There are currently 34 member states of the EPC, following the addition of Norway and Croatia on 1 January 2008. A full list of member states of the EPC can be found at http://www.epo.org/about-us/epo/member-states.html.

The number of member states of the EPC could soon rise to 35 with the addition of the Former Yugoslav Republic of Macedonia. The Former Yugoslav Republic of Macedonia is currently an extension state, i.e. a state which recognizes European patents, but is not a member state of the EPC. However, the state has been invited to accede to the EPC by the Administrative Council. Updates on the accession of this state will be provided in due course.

2: Trade Marks

A registered trade mark application can be filed in Europe under the Community Trade Marks Regulations. The Community Trade Marks Regulations are normative acts defined in Article 249 of the EC Treaty. As such, the Regulations have general application, and are binding in their entirety and directly applicable in all Member States of the European Union.

Due to the binding nature and general application of the Regulations, a Community trade mark application automatically covers all of the member states of the European Union.

There are currently 27 member states of the European Union following the most recent expansion in 2004. A full list of the member states of the EU can be found at http://europa.eu/abc/european_countries/index_en.htm.

3: Registered Designs

A registered design application can be filed in Europe in an analogous way to a Community trade mark under the Community Registered Designs Regulations. The Community Registered Designs Regulations are normative acts defined in Article 249 of the EC Treaty. As such, the Regulations have general application, and are binding in their entirety and directly applicable in all Member States of the European Union.

In a similar manner to the Community trade mark, a Community registered design application automatically covers all of the member states of the European Union.

EU Enlargement

The European Union currently has three candidate countries; Croatia, the Former Yugoslav Republic of Macedonia and Turkey. These countries have applied to join the EU and have been recommended for candidacy. They now have to meet certain EU requirements prior to being able to accede to the EU. These requirements include the meeting of certain standards in Intellectual Property law.

The latest Progress Reports from the European Commission on the candidate countries reveal that Croatia, the Former Yugoslav Republic of Macedonia and Turkey have made good progress in aligning their Intellectual Property laws with the EU standards.

Once the candidate countries become member states of the EU, existing Community trade mark and Community registered design registrations and applications are automatically extended to cover these new states.

Extending Rights Further Afield

1: Patents

The Patent Cooperation Treaty (PCT) is a treaty which allows a single patent application to be filed with the World Intellectual Property Organisation and be recognized as a national patent application in each of the Treaty’s member states. States become members of the Patent Cooperation Treaty by acceding to the Treaty and becoming bound by its regulations.

A patent application filed under the PCT automatically designates all of the member states. However, a PCT application can not result in a granted international patent. The applicant must at a later point decide to proceed with the application in one or more of the member states.

There are currently 139 member states of the PCT. These include major territories such as Europe, the US and China. The most recent states to accede to the PCT include Angola on 27 December 2007 and Sao Tome and Principe ST on 3 July 2008. A full list of member states of the PCT can be found at http://www.wipo.int/pct/guide/en/gdvol1/annexes/annexa/ax_a.pdf.

2: Trade Marks

An international trade mark can be filed under the Madrid Protocol. This is an international treaty which binds its members to recognise a single trade mark application filed with the World Intellectual Property Organisation as a national application made in that state. The application is registered as a single international right.

The Madrid Protocol does allow member states to be automatically covered by an international trade mark application. Therefore, the applicant must choose which of the member states to designate in the trade mark application.

There are currently 76 member states of the Madrid Protocol. These include major territories such as Europe, the US and China. The recent member states include Madagascar, which acceded to the Madrid Protocol on 28 April 2008, and, much more recently, Ghana, which acceded on 16 September 2008. A full list of the member states of the Madrid Protocol can be found at http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf.

3: Registered Designs

The Hague Agreement (Geneva Act) is an international treaty under which registered design applications can be filed in much the same way as trade mark applications under the Madrid Protocol. The Agreement allows a single application filed with the World Intellectual Property Organisation to be treated as a registered design application in each member state. The application is registered as a single international right.

Similarly to the Madrid Protocol, the Hague agreement does not allow member states to be automatically covered by an international registered design application. Therefore, the applicant must choose which of the member states to designate in the application.

There are currently 30 member states of the Hague Agreement. However, the number of member states continues to increase. Significantly, the European Community became a member state on 1 January 2008, and the African Intellectual Property Organisation became a member state on 16 September 2008. A full list of the member states of the Hague Agreement (Geneva Act) can be found at http://www.wipo.int/treaties/en/documents/pdf/hague.pdf.

Further Information

Further information and leaflets on all of the different applications described above is available from the Reference Library on our website.