patents 101- Patentability

Question 1

Definition of Patentable Subject Matter

Answer 1

The U.S. patent law identifies patentable subject matter as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Meanwhile, In Israel, an invention may be a product or a process in any technological field, which is new, involves an inventive step, and is useful.

Question 2

Exclusions from Patentability:

Answer 2

In the U.S., laws of nature, natural phenomena, and abstract ideas are not patentable. In Israel, scientific theories, mathematical formulas, ways of performing mental acts, methods of doing business, and computer programs are generally not considered inventions. However, a mathematical formula or computer program that has a practical application producing a useful, concrete, and tangible result can be patented in Israel.

Question 3

Business Methods and Software Patents:

Answer 3

The U.S. and Israel also handle business method and software patents differently. While the U.S. allows business methods and software to be patented if they meet certain criteria (such as being tied to a particular machine or apparatus, or transforming a particular article into a different state or thing), Israeli patent law generally excludes business methods and computer programs from patentability, unless they produce a “technical effect” and have a practical application.

Example:
Amazon’s “1-Click” patent, granted in the U.S., streamlines online purchases by allowing single-click transactions using stored customer information.

Israel:
In contrast, the same “1-Click” method might not be granted a patent in Israel, as it could be seen as a business method, which is generally non-patentable. However, if it demonstrated a technical effect beyond typical program-computer interactions, it might be considered patentable.

Question 4

What’s the patentability of software in the U.S. vs ROW?

Answer 4

In the U.S., software can be patented if it’s applied to a particular machine or process. In much of the rest of the world (ROW), software as such is not patentable, but if it has a technical effect, it may be patentable.
example:
U.S.: Google’s PageRank algorithm. ROW: European Patent Office (EPO) requires a technical character, like a new method of compressing video data.

Question 5

How does patentability of business methods differ between the U.S. and ROW?

Answer 5

In the U.S., business methods are patentable if they are tied to a specific machine or if they transform an article into a different state or thing. In ROW, business methods are generally not patentable.
example:
U.S.: Amazon’s “1-Click” purchase. ROW: EPO does not allow patenting of methods for doing business as such.

Question 6

What about patenting isolates of nature in the U.S. vs ROW?

Answer 6

In the U.S., naturally occurring substances are not patentable. In ROW, isolates of nature can be patented if isolated from their natural environment and prepared or processed in an artificial way.
example:
U.S.: No patent for isolated DNA sequences. ROW: Some jurisdictions allowed patenting of isolated natural substances like the BRCA1 gene.

Question 7

How are diagnostic methods treated in the U.S. & AU vs. ROW?

Answer 7

In the U.S. and Australia, diagnostic methods are patentable. In ROW, the situation is more complex. In some countries, they can be patented, while in others, they cannot.
example:
U.S. & AU: Methods of diagnosing diseases like cancer could be patented. ROW: EPO doesn’t allow patenting of diagnostic methods practiced on the human or animal body.

Question 8

What about methods of treating the human body?

Answer 8

In the European Patent Office (EPO), methods for treatment of the human or animal body by therapy or surgery are not patentable. In ROW, treatment methods may be patentable depending on local laws.
example:
EPO: No patents for surgical methods. ROW: In the U.S., methods of treatment like a unique surgical procedure could be patented.

Question 9

How is patenting stem cells viewed in the U.S. vs. Israel (IL)?

Answer 9

In the U.S., human embryonic stem cells can be patented if they are not naturally occurring. In Israel, the patentability of human embryonic stem cells is a gray area and depends on ethical considerations and the specific context.
U.S.: The Wisconsin Alumni Research Foundation patented a method to isolate and propagate human embryonic stem cells. IL: Ethical guidelines affect decisions on patenting stem cell research.

Question 10

How does patentability of organisms differ between the U.S., EPO, and China (CN)?

Answer 10

In the U.S., genetically modified organisms can be patented. In the EPO, they can be patented if the technical feasibility of the invention is not confined to a specific plant or animal variety. In China, animal and plant varieties cannot be patented, but micro-organisms can.
U.S.: Monsanto patents on genetically modified crops. EPO: Patents on genetically modified organisms allowed, but not on specific animal/plant varieties. CN: No patents for animal/plant varieties but micro-organisms can be patented.

Question 11

What’s the stance on patenting plants?

Answer 11

United States (US): Under the Plant Patent Act, certain types of plants can be patented. This includes asexually reproduced plants that are new, distinct, and have not been sold or disclosed for more than one year.
European Patent Office (EPO): The EPO allows for the protection of plant varieties under the Plant Breeders’ Rights Law rather than patenting. Plant varieties can be protected if they are novel, distinct, uniform, and stable.
China (CN): Plant varieties can be protected under the Plant Breeder’s Rights Act in China. The protection includes novel, distinct, uniform, and stable plant varieties.

Question 12

methods of generating plants

Answer 12

United States (US): Methods involving traditional breeding can be patented in the US. However, methods involving biological processes for obtaining plants are generally not patentable.
European Patent Office (EPO): Essentially biological processes for the production of plants are not patentable according to the EPO’s interpretation.
China (CN): Methods for breeding plants can be patented in China if they meet the requirements of novelty, inventive step, and industrial applicability.

Question 13

Novelty

Answer 13

Novelty refers to the requirement that an invention must be new or not publicly disclosed prior to the filing of a patent application. It means that the invention should not have been disclosed in any form, such as through prior publications, public demonstrations, or public use. The invention must be a fresh contribution to the existing knowledge in the field.
mere general reference or abstract discussion of an idea or concept without specific technical details or enabling information would not necessarily invalidate the novelty of an invention. The disclosure must be sufficiently detailed and specific to anticipate or enable the invention.

Question 14

Inventive Step (Non-obviousness):

Answer 14

Inventive step, also known as non-obviousness, evaluates whether the invention would have been obvious to a person skilled in the relevant field. It means that the invention must not be an obvious combination or modification of existing knowledge or technology. The invention should involve an inventive leap or an unexpected solution to a technical problem.

Question 15

Industrial Applicability (Utility):

Answer 15

Industrial applicability or utility requires that the invention has a practical use or application and can be made or used in some form of industry or field of technology. The invention should serve a beneficial purpose and be capable of being produced or utilized.

Question 16

Enablement and Sufficient Disclosure:

Answer 16

Enablement and sufficient disclosure refer to the requirement that the patent application must provide enough information for a person skilled in the field to reproduce or implement the invention without undue experimentation. The application should describe the invention in sufficient detail, including its technical features, steps, components, or formulas, so that others can understand and practice the invention based on the information provided.

Question 17

Non-exclusionary Criteria:

Answer 17

Patent laws often exclude certain subject matter from patentability, such as abstract ideas, laws of nature, natural phenomena, or methods of doing business, depending on the jurisdiction. These exclusions aim to ensure that patents are granted for new and inventive technical solutions rather than fundamental concepts or basic economic activities.

Question 18

patentability vs freedom to operate

Answer 18

Freedom to Operate analysis evaluates the risk of infringing existing patents or intellectual property rights, while patentability assessment determines if an invention meets the requirements for obtaining a patent. FTO analysis looks outward at the existing intellectual property landscape, whereas patentability assessment looks at the novelty, utility, and non-obviousness of the invention itself.

Question 19

Freedom to Operate (FTO)

Answer 19

Definition: Freedom to Operate refers to the assessment of whether a product or process infringes upon existing patents or other intellectual property rights. It involves conducting a thorough search and analysis of relevant patents and other forms of intellectual property to determine if there are any legal barriers to commercializing an invention. By ensuring freedom to operate, companies can avoid potential infringement lawsuits.

Question 20

בעל אמצאה

Answer 20

הממציא עצמו או הבאים מכוחו והם מי שזכאי לאמצאה מכוח הדין או על פי העברה או על פי הסכם

Question 21

בעל פטנט

Answer 21

האדם הרשום בפנקס כמי שניתן לו פטנט או כמי שעברה אליו הבעלות בפטנט

Question 22

publication

Answer 22

ifferent types of disclosures that could potentially be considered as prior art in the context of patent law:
1. Self-Disclosure: Public information shared by the inventor before filing a patent.
2. Offer for Sale: Selling or offering to sell the invention before filing a patent.
3. Partial Disclosure: Publicly revealing part of the invention before filing a patent.

Please consult with a patent expert for advice specific to your situation.

Question 23

What is ‘prior art’ in the context of patents?

Answer 23

Prior art refers to any technology disclosure that existed before filing a patent application. This can include issued patents, publications, or pending patent applications.Prior art must be publicly available before the filing date of a patent application. Anything disclosed or used after the filing date generally does not count as prior art.

Question 24

Types of Prior Art:

Answer 24

Prior art can include published documents like patents, scientific papers, technical journals, conference proceedings, and books. It can also encompass non-patent literature such as technical reports, theses, dissertations, user manuals, and product catalogs. Additionally, public use, sale, or demonstration of the invention, oral disclosures, internet publications, and prior patents can be considered prior art.

Question 25

Does a patent give you the right to exploit an invention?

Answer 25

• A patent is a negative right. It gives you the right to prevent others from exploiting the invention. It is not an enabling right.
• Patents owned by others may overlap or encompass your own patent.-> Seek a licence before commercialising.
• Patents do not grant the right to use the invention. For example, before a new drug can be sold on the market, it needs the formal approval of government agencies.
• Patents are strictly territorial. You cannot take action against infringing products or processes in countries where you do not have patent rights. You must wait for such infringing articles to cross the border into a country where you have rights before you can take action.
  (You might not be planning to sell any products in, for example, East Asia, but if you think it will be a source of infringing copies which would flood your European market, then you would be wise to consider patent protection in East Asian countries, so that you can stop the problem at the source.)

Question 26

Rights conferred by patents

Answer 26

Patent owners have the right to prevent others from making, using, offering for sale, selling or importing a product that infringes their patent, for a limited amount of time.

Exceptions include use for non-commercial purposes, such as private use or academic research.

Further options include licensing inventions to others, or allowing everybody to use the invention for free.

Many important technologies such as CDs, DVDs, mobile phone technology and digital TV are covered by numerous individual patents that companies license to each other in a process known as cross-licensing.

If commercialising your invention means using the intellectual property of others, then you need to have their permission!

Question 27

cross- licence agreement.

Answer 27

It may be that your invention falls within the scope of an earlier patent. You might have invented the first-ever electric kettle which uses a ceramic heating element as its base-plate. This has advantages over kettles which have a metal heating element upon which limescale (calcium deposits) forms. Such a kettle might be novel and inventive, and get you a patent (patent B). But it still falls within the scope of an earlier patent for all electric kettles (patent A). In order for you to make, use and sell
your invention you need a licence from the patent owner of the earlier, broader patent, but they in turn would need a licence from you to make kettles with ceramic heating elements. This is where you could enter into a cross- licence agreement. Indeed, this is where the vast majority of industrial collaborations start.

Question 28

challenges in patent searching

Answer 28

1. Challenge: Blocked Information
   
   • Structured confidentiality
   • Certain information withheld from the public for a specified period
   • Examples: 18-month confidentiality in the US, public circle in Australia
2. Challenge: Lack of Computerized Databases
   
   • Not all countries have public databases
   • USPTO and EPO are examples of computerized patent databases
   • Direct approach to local patent authorities may be necessary
3. Challenge: Searching in Foreign Languages
   
   • Difficulty in complex searches in unfamiliar languages
   • Machine translation or professional services may be required
   • Consult with language-fluent patent professionals

Question 29

When relating to the findings during a patent search, there are a few considerations to keep in mind:

Answer 29

1. Close Similarities: It is common to find prior art that is close or similar to the invention being searched. These similar inventions may impact the novelty or non-obviousness of your invention. It is important to carefully analyze and compare the prior art to determine its relevance and potential impact on your patent application.
2. Commercial Viability: While conducting a patent search, it is crucial to ensure that your invention has a maximum commercial scope within the boundaries of your patent. This means identifying and assessing prior art that may have a significant overlap with your invention in terms of functionality, features, or market applications. By doing so, you can evaluate the potential commercial value of your invention and make informed decisions about pursuing patent protection.
3. Relevant Patents: Patents that fall within the same field as your invention are those that are closely related in terms of technology, industry, or application. These patents may cover similar subject matter or address similar problems. Analyzing relevant patents can provide insights into existing inventions, their patent coverage, and the competitive landscape in your field. It can also help you identify potential licensing opportunities or areas where your invention offers distinct advantages over existing solutions.

Question 30

When is it appropriate to perform an infringement test for the invention?

Answer 30

It is generally appropriate to conduct an infringement analysis or FTO search when:

You are planning to commercialize your invention.
There is a potential risk of infringing existing patents or intellectual property rights.
Your invention is in a field where patent protection is relevant and active (Technology and Electronics, Biotechnology and Pharmaceuticals, Automotive and Transportation, Energy and Renewable Technologies)

Question 31

It may be necessary to give up the infringement test or FTO search when:

Answer 31

The costs of performing the analysis outweigh the potential risks of infringement.
The invention is unlikely to encounter patent-related obstacles due to its unique features, novelty, or limited market scope.
The invention falls within a field where patents are less prevalent or less enforced (Fields with less prevalent patent activity: Arts and Entertainment, Consumer Goods, Retail and Services.)

Question 32

What is the field of invention?

Answer 32

The field of invention refers to the specific technical area or industry in which your invention operates. It is important to identify the relevant field to effectively analyze patents and intellectual property rights that could potentially affect your freedom to operate.

Question 33

How to reduce FTO search costs?

Answer 33

Focus on searching patents of competitors or companies operating in your specific market segment.
Prioritize searching patents in jurisdictions where your product or service will be marketed or manufactured.
Utilize professional patent search services or consult with a patent attorney to efficiently conduct the search.
Leverage advanced search tools and databases to streamline the process and narrow down relevant patents.
Consider utilizing patent landscape analysis or technology scouting services to gain broader insights into the patent landscape at a lower cost.
Prioritizing products or services that are most valuable or likely to infringe on existing patents.

Question 34

Role of FTO Analysis in IP Strategy:

Answer 34

FTO analysis is a key component of a company’s intellectual property (IP) strategy. It can help a company identify and manage risks, while also identifying opportunities for patenting or further development. Despite its cost, regular FTO analysis can provide significant value by helping a company navigate the complex landscape of patents and avoid costly litigation.

Question 35

factors to consider when deciding where to file a patent:

Answer 35

1. Determine available budget: Filing a patent can be an expensive process, especially when filing in multiple countries. Costs can include filing fees, translation costs, and attorney fees. Therefore, it’s important to consider your budget when deciding where to file.
2. File where your market is: If you’re planning to sell your product or service in a specific country or region, it’s crucial to file a patent there to protect your invention from being copied by competitors.
3. File where your potential investors may have interest: If you’re seeking investment, consider where your potential investors are based or where they may have business interests. Having patent protection in these areas could make your invention more attractive to investors.
4. File where competitors’ production is active: If your competitors are manufacturing or selling similar products in certain countries, it may be beneficial to file a patent in those countries to prevent them from copying your invention.

Remember, the decision on where to file a patent should be made strategically, considering both the potential benefits and costs. It’s often advisable to consult with a patent attorney or a patent advisor to make the most informed decision.

Question 36

What is the Patent Prosecution Highway (PPH) and what are its benefits?

Answer 36

The Patent Prosecution Highway (PPH) is a set of initiatives for accelerated patent prosecution procedures through sharing information between patent offices. It’s based on bilateral agreements between patent offices and allows an applicant who has received a ruling that at least one claim in an application is patentable to request fast track examination of corresponding claims in corresponding applications in another patent office.

Benefits of the PPH include:

Faster Processing: Applications under the PPH are generally examined more quickly.
Increased Efficiency: The second office can process the application more efficiently by reusing the work done by the first patent office.
Higher Allowance Rates: Applications under the PPH often have higher allowance rates, as the claims have already been found to be patentable by another office.
Cost Savings: Faster processing and higher allowance rates can lead to cost savings for the applicant.

Question 37

What is the Global Patent Prosecution Highway (GPPH)?

Answer 37

The Global Patent Prosecution Highway (GPPH) is an agreement between participating international patent offices that allows for fast-track patent examination among them. If an applicant receives a positive ruling from one participating patent office, they can request accelerated processing of their corresponding application in any of the other participating offices. This can lead to quicker patent grants, increased efficiency, and potential cost savings. The GPPH aims to avoid duplication of work across patent offices, thereby improving the patent examination process worldwide.

Question 38

three types of continuing applications in the U.S.:

Answer 38

1. Continuation Application: This is a type of patent application that follows a parent application, and it claims priority from the parent application’s filing date. A continuation application is typically used when an applicant wants to pursue additional claims to an invention that were disclosed but not claimed in the parent application. The disclosure in a continuation application is identical to that of the parent application.
2. Divisional Application: This is filed when a patent examiner issues a “restriction requirement.” A restriction requirement occurs when an examiner determines that an application contains claims to more than one distinct invention and requires the applicant to elect one invention for prosecution in the original application. The other inventions can be pursued in divisional applications. Like a continuation application, a divisional application claims priority from the parent application’s filing date.
3. Continuation-In-Part (CIP) Application: This is used when an applicant wants to add new subject matter to the disclosure of the parent application. A CIP application contains at least some of the same information as the parent application, but also adds new matter. The new matter does not get the benefit of the parent application’s filing date.

All these continuing applications must be filed while the immediate parent application is pending, i.e., before it is either abandoned or matures into a patent. The strategy for filing these applications depends on the specific circumstances of the invention and the goals of the applicant

Question 39

Continuation Application:

Answer 39

Sure, let’s delve a bit deeper into each type of continuing application:

Continuation Application:
A continuation application is filed when an applicant wants to make different claims for an invention that was disclosed in an earlier or “parent” application.

• Broaden Claims: If the claims in the original patent application were too narrow or specific, a continuation application can be used to broaden the scope of the claims to cover more variations of the invention.
• Narrow Claims: Conversely, if the original claims were too broad and failed to get past the patent examiner, a continuation application can be used to narrow the claims and focus on a specific aspect of the invention.
• Picture Claim: This is a type of claim that is written to cover a competitor’s product as closely as possible. If a competitor has a product that’s very similar to the invention, a continuation application can be filed with a picture claim that describes the competitor’s product.
• Redirection: If during the prosecution of the original application, it becomes clear that a different aspect of the invention is more likely to be patentable, a continuation application can be filed to redirect the claims towards that aspect.

Question 40

Divisional Application:

Answer 40

Divisional Application:
A divisional application is filed when a patent examiner issues a restriction requirement, which is a declaration that the original application is trying to cover more than one distinct invention.

• Restriction Requirement: If the patent examiner determines that the original application covers multiple inventions, the applicant is required to choose one for the current application. The other inventions can be pursued in divisional applications.
• Re-joining Claims: If a generic claim is found to be patentable, specific claims that were previously divided out due to a restriction requirement can be rejoined with the generic claim in a divisional application.
• Re-joining Method of Use Claims: Similarly, if method of use claims were divided out due to a restriction requirement, they can be rejoined in a divisional application if a generic claim is found to be patentable.

Question 41

Continuation-In-Part (CIP) Application:

Answer 41

Continuation-In-Part (CIP) Application:
A CIP application is filed when an applicant wants to add new information to the specification that was not disclosed in the original application.

• Added Text: A CIP application includes additional disclosure that was not in the parent application. This could be new data, improved methods, or entirely new embodiments.
• Limitations: The new subject matter in a CIP does not get the benefit of the filing date of the parent application. This means that any public disclosures of the new subject matter that occurred more than a year before the CIP filing date could be used as prior art against the CIP application. Additionally, the patent term for the new subject matter is limited to 20 years from the filing date of the CIP, not the parent application.
• Cost Savings: Filing a CIP can be a cost-effective way to add new material to an existing application, rather than filing a completely new application.
• Small Ideas: A CIP can be a good way to patent smaller improvements or modifications to the invention disclosed in the parent application without having to file separate applications for each idea.

Remember, the decision to file a continuation, divisional, or CIP application should be made strategically, considering both the potential benefits and drawbacks. It’s often advisable to consult with a patent attorney to make the most informed decision.