In her article Proposed DIFC Intellectual Property laws – A Hub for Innovation, Madeleine Heal proposed legislation whereby foreign patents, trade marks and designs could be re-registered for the Dubai International Financial Centre. A footnote to her article referred to the position in Guernsey so I decided to find out more.
Guernsey has its own Intellectual Property Office and its own intellectual property laws the most interesting of which is The Registered Patents and Biotechnological Inventions (Bailiwick of Guernsey) Ordinance, 2009. This Ordinance provides for the registration in Guernsey of patents that have been registered overseas:
“Only the oversea registered proprietor of an oversea registered patent may be registered as the proprietor of a patent in the Register of Patents, and in this Ordinance –
(a) an “oversea registered patent” means a patent registered in a designated country in accordance with the laws relating to the registration of patents in force in that country,
(b) the “oversea registered proprietor” of an oversea registered patent means the person registered in a designated country as the proprietor of that patent in accordance with the laws described in paragraph (a), and
(c) a “designated country” means a country or office mentioned in Schedule 2.”
The list of designated countries in Schedule 2 includes not just the UK and the European Patent Office but the USA, China, India, Russia and several other countries. More interesting still is that there is no equivalent to s.1 (2) of the United Kingdom Act. Hence patents for business method and software inventions granted by say the US Patent and Trademark Office can be registered in Guernsey.
Most interesting of all is that the revocation of a patent overseas does not necessarily result in the patent’s revocation in Guernsey. That gives rise to all sorts of possibilities which are explored by the Guernsey lawyer, Elaine Gray, in her fascinating article “Guernsey gets ‘IT': Ditching the domino and the ‘Bilski’ bonus.”
Now why has 73 square kilometre bailiwick off the coast of France enacted this interesting statute? My guess is that it has something to do with IP securitization. We don’t hear much of securization nowadays probably because mortgage backed securities were the means by which bad debts were offloaded onto investors. But that does not mean that the idea of lending money against future royalties or other income streams and spreading the risk as a means of raising funds for start-ups is a bad one.