Intellectual Property Management

A Guide for Scientists, Engineers, Financiers, and Managers

Claas Junghans, Adam Levy

• Publisher: Wiley-VCH
• Year: 2015
• ISBN:
  9783527802593
• Edition: 1
• Topic: Diritto
• Subtopic: Diritto sulla proprietà intellettuale

This concise introduction to European patent law and global patent perspectives combines the legal and economic perspectives to adopt a unique approach that serves both inventors -- engineers and scientists -- as well as financiers and economists.
Written by experts with first-hand knowledge this book is completely up-to-date, taking into account recent additions to European patent law, especially in the field of biotechnology and genetics. While concentrating on the EU, the world perspective is nevertheless represented, including US particularities. The result is a set of guidelines allowing readers to develop a holistic patent strategy suitable for their specific needs.
For scientists, engineers, managers and financiers in the chemical industry.

1
Terminology

Claas Junghans

For those who have had little or no prior exposure to the field, this chapter serves as a primer to the world of inventions and patents and introduces the topics that will be discussed in more depth in further chapters.

1.1 The Terms of Patenting

1.1.1 The Patent

Territoriality

A patent is a legal document that specifies a technical invention. Patents are territorial and relate to a specific country and the same invention can therefore be patented in a number of countries. Usually, these patents have the same owner, and are related to one another by their process of application; if that is the case, they form a patent family.

It is possible, however, for different owners to have rights to the same invention in different countries. This situation can arise if different applicants apply for patents on the same or similar inventions in different countries, or if the original inventor or applicant sells the patent rights for each country individually.

Exclusionary Rights

The owner of the patent is given certain rights to exclude others from making commercial use of an invention; specifically the right to exclude others from commercially using, selling, offering and keeping in stock an invention as specified in the claim section of the granted patent, in the particular country of the patent. Since the law governing patent protection differs across geographical jurisdictions, the scope of this protection varies for patents within the same family.

Similar exclusionary rights can be obtained on designs, and in certain cases on names used in the context of a business, termed trademarks. There are important differences between the protection of patents on technical inventions, also termed “utility patents”, which are the main subject of this book, and design patents and trademarks, which are discussed in Chapter 5. Utility patents have a maximum term of 20 years from the day of filing the application; other forms of intellectual property (IP) have different terms.

Reward for Disclosure

The patentee is awarded the right to exclude competitors as a reward for the public disclosure of an innovation, intended to stimulate scientific development. To meet this criterion, however the patent must describe the invention in a way that enables others to reproduce the invention. US law is especially stringent in its demand for a “best mode” disclosure, non-fulfilment of which may lead to invalidation of the patent.

First-to-Apply

More than one inventor may independently make an invention. Europe and most other nations, with the exception of the USA, grant the patent right to the applicant who first files an application on the invention in their country. In the USA, the right to patent is granted to whomever first made the invention regardless of the time of filing. Efforts are ongoing to bring US law in line with the rest of the world, but it is not clear whether this particular harmonisation will be successful.

1.1.2 The Process of Patenting

Drafting

Patenting an invention is a formal process resembling a dialogue between the applicant, who submits a patent application on an invention, and the national or regional Patent Office, which decides whether and to what extent the invention is patentable.

The process of drafting entails the collection of all material describing the invention, as well as publications that describe the technical background of the invention. A skilled professional, most likely a patent attorney or in-house patent agent, then drafts a patent application specifying the invention in all necessary detail, and claiming the essential principle and important embodiments that are to be protected.

Application

The first formal step in achieving patent protection is the submission of a patent application. This application alone confers only marginal protection to its owner, and most countries grant provisional protection rights to the applicant after the application is made public, usually after 18 months.

An applicant may choose to send several patent applications originating from the same invention to different individual countries. Alternatively, an application can be submitted to trans-national offices acting on behalf of countries bound together by an international treaty. Examples of such transnational offices are the European Patent Office (EPO) and the office of the World Intellectual Property Organisation (WIPO). In most cases these pathways only facilitate the patenting process, and the applicant ultimately ends up with a family of national patents.

A “world patent” does not exist, but an application under the Patent Cooperation Treaty (PCT) allows the applicant to submit applications to a very large number of countries in a single filing. The applicant will send a “PCT filing” to a national or regional office, either as a first or as a follow-up filing. The applicant will then have up to 30 months after the initial first filing to decide in which other countries of the PCT member states an application should be submitted. Commercially, the most notable exception to PCT membership is Taiwan, which has instead bilateral treaties with most countries to the same effect.

Fig. 1.1 Patent process: The national (left side) and the PCT pathway (right side) differ in how quickly an enforceable patent is issued. Many applicants choose the PCT pathway to file in many countries with one single application, because costs are deferred until later in the process.

Priority

Priority is a technical term referring to a ranking or “time-stamping” of inventions by calendar date. The earlier an invention has first been registered as a patent application at a Patent Office, the earlier its “priority”. Of two applications that describe a similar invention, only the application with the earlier priority can give rise to a patent in any particular country.

A priority application can also be used as the basis for a second, extended application that encompasses its content. The content is then treated as if it had been submitted at the earlier priority date. The submission of an application therefore confers the right to be considered prior to others, and this right may extend to other applications.

This concept of a “priority right” was initially applied to individual offices, but today, most offices work together under the terms of an international treaty, the Paris Convention, in recognizing applications from other offices and priority rights can be used almost worldwide. The applicant may submit an application for a patent in only one country, and wait up to twelve months until submitting further applications relating to the same invention in many more countries. These later applications benefit from their claim to priority of the first application.

A follow-on application is granted a 20-year term, and an important result of submitting such applications using the priority of an initial filing is the effective prolongation of the invention’s protection to 21 years. Whilst in fast-moving technologies this may have little importance, in technologies with long lifetimes, this mechanism may be very relevant to the total balance sheet of the patent.

Prior Art

Publications made before the priority date, which describe the elements and technology of the invention, form the “Prior Art”. Publication does not have to be made in writing; public disclosure in a speech, or presentation, or over the internet also can form part of the prior art, though written disclosures are easier to track and date.

The existence of prior art describing an invention or elements of an invention, is an important weapon in contesting a patent, and a lot of prior art case law has therefore been compiled. Selling an invention before submitting a patent application, for instance, will in most cases make the invention part of the prior art, and hence unpatentable, even if the invention was not readily seen from the sold object. As always, however, what constitutes publication and what exact effect this has on patentability, is regulated nationally and may differ between countries.

Search Report

Many patent offices conduct a search of previous patent applications to identify the extent to which the claimed invention has been anticipated in the state of the art, or indeed, which documents can be found to come closest to the invention. The applicant thus receives official notification by a competent patent office as to which publications, if any, may interfere with the patentability of the invention. Decisions as to how to proceed with research and patenting activities may be influenced by this report. This search report is usually published with the application 18 months after the priority date.

Examination

Depending on the country, patent applications may be subject to mandatory examination, or may remain at the application state until the applicant or another interested party requests examination. The USPTO (United States Patent and Trademark Office) examines applications automatically without a need for further request. In many other jurisdictions however, the request for examination is a separate step in the procedure and can be delayed until a search report by the respective patent office has been issued. This gives the applicant a chance to amend or abandon the application in light of the findings of the search report.

For applications being processed by the European Patent Office, requesting the examination is mandatory within the first two years after application. Although there is a requirement to explicitly request examination before the EPO, the ...