Earlier this week I received a call from a prospective client looking to register his intellectual property in several international markets. His call was prompted by a post I wrote several months ago, How Do I Register My Patent, Trademark or Copyright in a Foreign Country?
In the post, I presented a general overview of registering your intellectual property overseas. While registering your patent, trademark or copyright in a foreign country is a relatively straight forward process, problems can and do often arise.
U.S. online retail giant Amazon.com’s experience in the European Union presents an excellent example of problems that can arise in applying for intellectual property protection overseas.
As reported in the PC World article Europe Rejects One-click-to-buy Amazon Patent Application, the European Patent Office (EPO) last month rejected Amazon.com’s appeal to be granted a patent for its “one-click” ordering system.
Amazon started using the one-click feature in September 1997, and it was granted a patent for it in the U.S. in 1999. Amazon had hoped to patent the one-click feature in the European Union.
In rejecting Amazon.com’s patent application, the EPO ruled that the one-click method was too obvious and relied on existing inventions, called ‘prior art’ in patent law. A copy of the EPO Appeal Board’s decision (T1244/07) can be found here.
The lesson here: Don’t assume that because your patent application was granted in the U.S. or your home country that it will be granted elsewhere.
If patent savvy technology giants like Amazon.com can run into trouble, chances are smaller enterprises can too. It pays to do your homework. The procedure for granting patents, the requirements placed on the patentee, and the extent of the exclusive rights vary widely between countries according to national laws and international agreements.