IP Laws: Patents

Patents are one of the oldest forms of intellectual property protection and, as with all forms of protection for intellectual property, the aim of a patent system is to encourage economic and technological development by rewarding intellectual creativity. This article will explain to you: the purpose of a patent, the benefits of obtaining a patent, what sorts of things may be patented and what the term of protection is for a valid patent. Also explained will be the nature of the international patent system.

Patents

What is a patent?

Let’s begin by exploring what a patent is. Issued, upon application, by a government office (commonly the Patent Office), a patent is a document which describes an invention and creates a legal situation in which the invention can normally only be exploited with the authorization of the owner of the patent. In other words, a  patent protects an invention, and grants to the owner the exclusive rights to use his/her invention for a limited period of time. And an invention may be defined as a new solution to a technical problem.

Example of inventions: band-aid, electric iron, safety pin, ball point pen, telephone, etc.

Now, let’s listen to the next audio segment, which explains the purpose and history of patent protection.

Audio segment 1: Can you tell me what the purpose of a patent is?

The purpose of a patent is to provide a form of protection for technological advances. The theory is that patent protection will provide a reward not only for the creation of an invention, but also for the development of an invention to the point at which it is technologically feasible and marketable, and that this type of an incentive would promote additional creativity and encourage companies to continue their development of new technology to the point at which it is marketable, useful to the public and desirable for the public good.

Audio segment 2:  When did the system of patenting start?

It was developed over several centuries. There were patents back in the 1700s. The system has evolved in the intervening years and we now have a very modern system. We are still developing the international system to make it even more modern and to keep it abreast of technological change and the changing economic system.

What is the main purpose of a patent?

The purpose of a patent is to provide protection for technological advances (inventions). It provides an award for the disclosure of the creation of something new as well as for the further development, or refinement, of existing technologies. In short, through patents, progress in changing technologies finds incentive to improve.

Now listen to the next audio segment to find out how a patent offers protection and how various sorts of things cannot be protected.

Audio segment 4: You have mentioned some of them. But what, in short, are the characteristics that an invention has to have to be patentable?

There are several characteristics that a patent office will look at to determine whether the invention is patentable. At the outset, there has to be a patent application on file. In most cases that patent application is examined by a technical expert to ensure that it meets the substantive criteria for patentability.

The first of those criteria is that it has to be new (novel), meaning that the invention must never have been made before, carried out before or used before.

The second criterion is that there must have been an inventive step. In other words, it must represent a sufficient advance in relation to the state of the art before it was made to be considered worth patenting.

The term “non-obvious” is also used: if it were obvious to a person of ordinary skill in the field concerned, it would not progress to the stage qualifying for patent protection.

The third criterion is that it needs to be industrially applicable. It has to be susceptible of use in some way. This is a very broad criterion. Almost anything can be used, even if it’s in the research stage, but, as I mentioned, that does not apply to a perpetual motion machine, because it simply will not work.

In summary therefore, in order to be patentable, an invention must be new, involve an inventive step, and be capable of industrial application.

In order to obtain a patent, an applicant must first file an application for a patent. Depending on the applicable law(s), the Patent Office may examine the application to determine whether the criteria, listed above, have been satisfied, before deciding whether to issue a patent. As mentioned above there may be excluded categories, which could cause the patent application to fail. Examples of such categories can be found in several national legislation.

The application for patent must also comply with some other formalities. As a general rule, a patent will be granted to the first person to file a patent application. This is called the ‘first-to-file’ system. That is why the filing date of an application for patent is very important.

An Office may also examine the application to determine whether it sufficiently discloses the invention such that someone skilled in the area or field with which the invention is concerned could make or use the invention. Providing an adequate written description to enable someone to practice the invention is generally what the patent applicant must give in exchange for receiving the benefits conferred by a patent.

The Paris Convention for the Protection of Industrial Property (1883), which is the oldest Convention administered by WIPO dealing with industrial property, has provided for ‘the right of priority’. This right means that, on the basis of a regular first application filed in one of the Contracting States, the applicant may, within a period of 12 months, apply for protection in any of the other Contracting States. These later applications will then be regarded as if they had been filed on the same day as the first application. In other words, these later applications will have priority over applications which may have been filed during the same period of time by other persons for the same invention.

You may be asking what benefits a patent confers, particularly if the invention has to be disclosed. In general the answer is that for the period of protection the patent holder may exclude others from making, using, offering for sale, selling, and importing the invention claimed in the patent. However, the patent owner has the right to assign (sell) or to license the patent. In other words, the patent owner may if he/she so wishes, transfer his/her exclusive rights to another person through the conclusion of licensing contracts.

Who is authorized to exclude all others from making, using, selling, offering for sale or importing an invention?

The owner of the patent can exclude others from making, using, selling, offering for sale or importing the patented invention and can also exclude commercialization. This exclusion is only applicable in the countries where the invention is protected by a patent.

In one sense a patent is a deal between the public and the patent holder. With the grant of a patent, which is premised upon satisfying all the conditions for patentability as discussed above, the patent holder receives the right to prevent anyone else from practicing the invention claimed in the patent. In exchange, the government, by requiring compliance with the conditions for patentability and giving patent protection for a fixed term, ensures that the information regarding the invention is publicly disclosed, and the invention itself is available for anyone’s use after the expiration of the patent. This period is typically 20 years, measured from the date of filing of the patent application.

In all the countries in which a patent holder chooses to patent the claimed invention, the issue of enforcement would become important after the grant has been issued. Enforcement of patents is a large subject, for which this course can merely point out the guiding principles involved.

To begin with, it is the patent holder that must seize the initiative in the face of potential infringement. Detection of potential or actual infringements, and bringing these to the infringer’s attention rests exclusively with the patent holder.

In a majority of situations, a polite letter giving notice of the existence of the patent is sent. Carrying the implication that a lawsuit might follow, such letters often prove very successful, leading to either a suppression of infringement or a conclusion of a successful licensing arrangement.

There are, however, cases in which no mutually advantageous negotiated solution can be found, even after lengthy attempts. During the course of an infringement action, in the pre-trial phase, negotiations may still take place, often through use of a conciliator or arbitrator. Interestingly, settlements often include the earlier-mentioned license.

As was said before, the issue of enforcement is deep and complex; you may want to pursue this subject further within the context of the domestic law of the country where you are situated.

Summary

This module has introduced the patent area of intellectual property. Patents are one of the oldest forms of intellectual property protection and, as with all forms of protection for intellectual property, the aim of a patent system is to encourage economic development by rewarding intellectual creativity. This module explained that the aim of a patent is to encourage economic and technological development by giving reward to intellectual creativity.

Under patent protection, both new creations and the further development of existing ones are covered. A breakthrough in science like the invention of penicillin is as equally important and protected as a new lever on a machine invented to make the machine run faster. Patents protect inventions and in general, an invention may be defined as a new solution to a technical problem. The solution is the ‘idea’ and protection under patent law does not require that the invention be represented in a physical embodiment. However, there are things that cannot be patented. These include; things discovered in nature and machines that defy the laws of nature, such as a perpetual motion machine. Other exclusions, which are commonly set out within the applicable law, are scientific theories and mathematical methods; schemes, rules and methods for doing business; and methods of treatment for human or animals or diagnostic methods.

Once a patent application is on file, there are two general approaches: in some countries it is reviewed only as to formalities, while other jurisdictions also examine the application substantively by a technical expert to ensure that it meets the requirements of patentability. Characteristics that an invention must have are:

–               it must be new or novel;

–               it must involve an inventive step,

–               it must be capable of industrial application.

In short, a patent is a deal between the public and the inventor. The state, by giving protection for a fixed term ensures that the inventor gets rewarded. After expiration, which is typically 20 years after the date of filing of the application of the patent, the invention becomes available for anyone’s use. The enforcement of one’s patent is a large subject, and it is the patent holder that must negotiate or litigate the infringement of their rights. Since there is no such thing as worldwide protection, an inventor must pay filing fees and maintenance fees to each country where he or she wishes to be protected.

Legislative Texts:

·                                            Paris Convention for the Protection of Industrial Property

·                                            Patent Cooperation Treaty (PCT)

·                                            Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement)