Patents Flashcards
What is a patent and why is it useful?
A patent is a government or regional office-issued document that describes an invention and reserves the right of exploitation of the invention to the inventor.
It exchanges disclosure of the invention for a monopoly of the invention.
It solve’s Arrow disclosure paradox, where the value of the invention to the inventor disappears with the disclosure of the invention.
It enables the inventor to reap the economic benefit from her inventions.
What rights does a patent enclose and which are the limitations?
The right to exclude others from making, using, selling or importing the invention.
(Does not give right to the owner, but prevents others to exercise those rights)
The right to take action against infringers.
Enforcement is a responsibility of the patentee.
The inventor retains these rights for the length of the patent, provided he pays the renewal fees.
Limitations of rights:
- Patent can be subject to amendment in case of detection of later defects.
- If a patent builds upon a previous invention, it might need a license.
- Patent owner must work the invention to retain the rights. The patent cannot serve as merely preventing others from woking the invention.
- Government can use the patent where public interest requires.
What are the conditions for patentability?
- Novelty
- Utility/Usefulness.
- Non-obviousness. It must exhibit a sufficient inventive step.
- the invention must be sufficiently disclosed in the application.
Exceptions to patentability:
- Material or substances already existing in nature
- scientific theories and mathematical models
- plants, animals, organisms, biological processes
- schemes, rules and method (for doing business or playing games)
- Unethical or against the public good
Describe better the requirements of Novelty, Utility, Non-obviousness and Disclosure.
Utility = has a practical purpose and is industrially applicable.
Novelty = Not included in the “prior art”
Non-obviousness = non-obvious to a person having ordinary skill in the art. There must be a clear difference between the state of the art and the claimed invention.
Disclosure = Disclosure must be sufficiently clear for the invention to be carried out by a person skilled in the art.
The description should describe at least one mode of carrying out the invention.
What is included in the “prior art” ?
Anything known or available to the public. Anything explicitly disclosed publicly becomes part of the “prior art”.
If the invention is implicit in the publication, e.g. through a “teaching”, lack of novelty will only be raised by the Patent Office if it is obvious what the invention is.
What is the structure of a patent application?
- Title of the invention
- Background of the invention to put into perspective against the prior art.
- Summary of the invention.
- Description of the drawings.
- Claims. which describe the scope of protection provided by the patent. Main claims + dependent claims.
- Abstract = short summary of the description and the claims.
What is the process of filing for a patent?
- Filing date.
Filing date determines the priority date of any subsequent filing in another country (Paris Convention). - Examination as to Form.
Check that the patent has a filing date and each of the sections. - Search
Gathering of the prior art. Generates a search report. - Examination as to substance
Checks the patent application against the prior art and the conditions for patentability. - Grant and Publication.
If the process has reached a favourable conclusion, the patent is granted by the patent office. Patent is:
- inserted in the patent register
- published in the official gazette
- patent owner is given a certificate of grant.
What is the right of priority?
According to the Paris Convention of 1883. The applicant A whom has filed a patent application on day X, can file a subsequent application in foreign country within the next 12 months and have priority on other applicants that have filed after day X but before the subsequent filing of applicant A.
What is infringement and how are patent rights enforced, are there limittions to infringement?
Infringement is the unauthorised exploitation of the patented invention by a a third party.
The initiative of enforcing a patents rests exclusively with the patent owner.
Common practice:
1. Send a polite letter.
2. Consider to offer a license
3. Recourse to legal action
(majority of cases never reach court and are solved in negotiations).
NOT infringement:
- Use for scientific and experimental purposes
- product was put on the market by the patent owner.
- Invention is in transit in the country
Remedies available to patent owner: Civil and Criminal sanctions.
How can the inventor work her invention?
- Selling the patent or licensing it
- Manufacturing it
Licensing:
- voluntary licenses
- compulsory licenses. license granted by the government against the will of the patent holder due to: abuse of patent rights (failure to work the patent within 3 years) or public interest.
What are the routes of obtaining a patent?
- National
- Regional (EPO)
- International (PCT).
How does the Patent Cooperation Treaty (PCT) patent filing work?
PCT is a patent filing route that simplifies the application process for multiple countries in the treaty. Nevertheless, the patents granted are national patents.
Steps:
1- Filing with national patent office or WIPO.
2- International Search.
International Search Authorities (ISAs) gather the prior art and produce written opinion.
3. International Publication.
After 18 months, the application is disclosed publicly on PATENTSCOPE.
4. Supplementary International Search (optional).
In case the prior art is extremely vast.
5. International Preliminary examination.
ISAs carries out a patentability analysis.
6. National Phase.
Usually 20 months after the filing date, the patent application is sent to the national offices that can choose to grant national patents.
Advantages:
- Not incur the cost of filing at each individual office and postpone major costs of seeking international patent protection (option to abandon).
- Process takes longer (18 months) can give time to test the market.
- Application accepted in any receiving language of the office.
- Easier examination in national phase.
How does the European Patent Office (EPO) patent filing work?
European Patent Convention, protection in 38 European Countries on a sigle application.
European patents undergo substantive examination = stronger protection.
Steps:
1. File application with EPO in Munich, The Hague, Berlin or at the national patent office of any contracting state.
It can be filed in any language but it will be processed in either English, French or German.
2. Formal examination
3. Search.
Producing a report and an opinion.
4. Publication of the application.
18 months after the filing.
5. Substantive Examination.
Assessing that the patent meets the requirements for patentability.
6. Grant of patent.
Patent has to be validated in contracting states, hence translated in the official languages.
7. Opposition.
within 9 months from granting.
8. Revocation or limitation.
Patent owner may request this any time.
9. Appeal.
Patent owner may appeal the decision of the EPO on the patent.
What challenges did the Internet bring to the patent system?
What inventions in the digital environment are patentable?
Specific cases of debate:
1. Business Method Patent
following a joint research, the JPO, USPTO and EPO have agreed that:
• A technical aspect is necessary for a compute-implemented business method to be eligible for patenting.
• To merely automate a known human transaction using known automation techniques is not patentable.
- Software Patents
No that software is sold separately from computers, where to draw the line between copyright and patent protection for software?
at EPO: a computer-implemented invention (CII) can be patented, and must make a technical contribution to the state of the art. - Prior art effect
Is digital content considered “prior art”. The determination on the timing of disclosure of the cyber art to the public are the concerns. - Enforcement rights.
Where does the infringement take place (on distributed systems)? Can it be detected?
Is IP in Europe harmonised/integrated?
Trademarks and Designs = full integration.
- Community Trade Mark (CTM)
- Community Industrial Design Regulation)
They are both linked to the international systems administered by WIPO: Madrid System for Trademarks and The Hague System for Designs.
Patents and Copyrights = Harmonisation.
- Remain national IPRs, but laws are similar in member states.
- EU directives are tool for harmonisation.
Working on a future Unitary Patent System.
