Patents and Trademarks
The legal framework for patents and trademarks in Czech Republic Pharma. Prepared in association with PRK Partners, a leading law firm in Czech Republic, this is an extract from The Pharma Legal Handbook: Czech Republic, available to purchase here for USD 99.
1. What are the basic requirements to obtain patent and trademark protection?
One can file for patent protection for any invention, in all fields of technology, provided the invention is new, involves an inventive step, and is capable of industrial application and the fee is paid. Patent protection lasts for 20 years and is subject to yearly maintenance fees.
For trademarks, the main requirements are the ability to be capable of distinguishing the goods or services of one undertaking from those of other undertakings and of being represented on the register in a way that enables the respective authorities and the public to determine the clear and precise subject matter of the protection afforded to its owner. Again, the relevant application fee must be paid. Trademark protection lasts ten years from the date of application and is renewable every ten years.
2. What agencies or bodies regulate patents and trademarks?
Both the patent and trademark systems are overseen by the Intellectual Property Office in the Czech Republic.
3. What products, substances, and processes can be protected by patents or trademarks and what types cannot be protected?
There is no specific list of inventions that can be patented. Any invention that meets the requirements of novelty, inventive step and capability of industrial application can be patented providing this invention is not:
- a discovery, scientific theory or mathematical method;
- an aesthetic creation;
- a scheme, rule or method for intellectual acts, playing a game or doing business, and a computer program;
- a presentation of information;
- a means of surgical or therapeutic treatment of the human or animal body;
- an invention contrary to public policy or to accepted principles of morality;
- a plant variety or animal breed or any biological means of production of plants or breeding of animals (except for microbiological means and products of such means).
Under Czech law, any mark that consists of any signs, in particular words, including personal names, or designs, letters, numerals, colors, the shape of goods or of the packaging of goods, or sounds, provided that such marks are capable of distinguishing themselves and can be represented on the register in the manner specified in Answer No. 1 above may be registered.
A trademark will not be registered if it:
- is devoid of any distinctive character;
- consists exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
- consists exclusively of signs or indications which have become customary in the current language or the bona fide and established practices of the trade;
- consists exclusively of the shape, or another characteristic, which results from the nature of the goods themselves, or characteristic which is necessary to obtain a technical result, or characteristic which gives a substantial value to the goods;
- is contrary to public policy or accepted principles of morality;
- is of such a nature as to deceive the public, for instance as to the nature,
quality or geographical origin of the goods or service;
- consists of, or reproduces in its essential elements, an earlier plant variety denomination registered in accordance with European Union legislation or national law, or international agreements, which the European Union or the Member State concerned is a party to, providing for protection of plant variety rights, provided it is sought to be registered in respect of plant varieties of the same or closely related species;
- has not been authorized by the competent authorities and is to be refused pursuant to Article 6ter of the Paris Convention for the Protection of Industrial Property (the “Paris Convention”);
- includes badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention and which are of particular public interest, unless the consent of the competent authority to their registration has been given;
- includes a badge or emblem of significant symbolic value, especially religious symbols;
- is excluded from registration pursuant to European Union legislation or international agreements, which the European Union is a party, providing for protection of traditional terms for wine and traditional specialties.
4. How can patents and trademarks be revoked?
A patent will be revoked by the Czech Intellectual Property Office if:
- the invention cannot be protected by a patent;
- the invention is not described sufficiently clearly and completely so as to be made or devised by an expert;
- the subject matter of the patent exceeds the content of the originally submitted application to have the invention patented or the subject matter of patents granted on the basis of a division of an application exceed the content of the original application (or if the scope of protection under the patent had been broadened);
- an authorized person proves that the owner of the patent has no right to the patent;
- the owner of the patent does not pay the applicable maintenance fee;
- the owner of the patent renounces the ownership of the patent.
A trademark will be revoked on application to the Czech Intellectual Property Office or on the basis of a counterclaim in infringement proceedings if:
- it is identical to an earlier trademark and the goods or services for which registration is sought are identical to the goods or services for which the earlier trademark had been granted;
- due to it being identical or similar to an earlier trademark and due to the goods or services covered by the trademarks being similar or identical − there exists a likelihood of confusion on the part of the public in the territory in which the earlier trademark is protected; the likelihood of confusion includes the likelihood of association with the earlier trademark;
- it is identical or similar to an earlier trademark, irrespective of whether the goods or services which it is to cover are identical, similar or dissimilar to those which the earlier trademark is registered for, where, in the case of an earlier trademark, the trademark has a reputation in the Czech Republic or, in the case of an earlier EU trademark, the trademark has a reputation in the European Union, and where the use without due cause of the trade-mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark;
- an agent or representative of the owner of the trademark applies for the registration thereof in his own name without the owner’s consent, unless the agent or representative justifies his actions;
- due to it being identical or similar to an unregistered or other mark used in business relations and the goods or services, which the marks relate to, being similar – there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association;
- the mark or the owner violates a natural person’s personal rights, in particular the right to one’s name, right to one’s likeness and the right to the protection of one’s speech of a personal nature;
- it violates rights to copyright;
- it violates rights to other intellectual property;
- it was registered in breach of legal requirements;
- it was not properly used for at least a period of five consecutive years;
- as a consequence of the owner’s actions or inactivity, the trademark has become the common term used in the trade for a product or service in respect of which it was registered;
- as a consequence of the use of the trademark by its owner, or with his
consent, in respect of the goods or services for which it was registered, the trademark is liable to mislead the public, particularly as to the nature, quality or geographical origin of such goods or services;
- the owner of the trademark does not pay the renewal fee;
- the owner of the trademark renounces the ownership of the trademark.
5. Are foreign patents and trademarks recognized and, if so, under what circumstances?
Foreign patents can be recognized in two ways in the Czech Republic. Firstly, if a European Patent was granted under the European Patent Convention, such patent is recognized after being validated in the Czech Republic. Secondly, a patent granted under the Patent Cooperation Treaty is recognized if the applicant designates the Czech Republic as one of the countries of validity in the initial application.
Foreign trademarks are automatically recognized in the Czech Republic if these are registered as a European Union trade mark (EUTM) or granted under the WIPO’s Madrid System, if the owner designates the Czech Republic as a country of protection. Additionally, well-known unregistered marks are protected by the possibility to oppose a newer identical or similar trademark registration by a third party.
6. Are there any non-patent/ trademark barriers to competition to protect medicines or devices?
Generic drugs may not be registered sooner than eight years after the registration of the original drug. In addition, a generic drug may only be marketed in the Czech Republic after the expiration of a 10 year period after the registration of the original drug lapses; this period may be extended to 11 years if approval is granted by the marketing authorization holder of the original drug.
7. Are there restrictions on the types of medicines or devices that can be granted patent and trademark protection?
There are no restrictions on the types of drugs or devices that can be protected through patents or trademarks other than those already described.
8. Must a patent or trademark license agreement with a foreign licensor be approved or accepted by any government or regulatory body?
No. However, license agreements may be registered with the Czech Intellectual Property Office in order to make them enforceable against third parties.