Patentability

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Patentability

• Basic IP Law
• Marcus Norrgård
• Autumn 2007

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Why patent?

• Keep others out of the market
• e.g. pharmaceutical industry
• does not work if it is possible to design around
• Does not mean that the patentee uses the patent
  himself!
• Restrict competitors
• Patent something so that it gets harder for
  competitors to offer good products
• Does not mean that the patentee uses the patent
  himself!
• May entail a great number of patents in some area
  that are meant to block competitors
• Revenue from licenses or sale
• Patents can be licensed and less important
  patents can be sold
• Retain the right to practice the invention
• A patent does not give the right to practice the
  invention as such it only gives the right to
  prohibit others from using the inventions. Other
  legislation (e.g. regarding safety) might
  circumscribe the right to use the invention
• Give your product credibility
• Patent pending is often used in marketing.

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Alternatives to patenting

• Keep secret
• Patents are for 20 years, secrets are forever
  if they are kept secret. cf. recipe of Coca-Cola.
• Keeping secret might work for manufacturing
  processes (how something is made) but not for
  things that can be figured out by studying the
  end product. Sometimes it is possible to figure
  out how something was made only by looking at the
  end product!
• publish, so that no one can patent
• Inventions that are not important to the company
  might be published if the estimated total costs
  for patenting are bigger than the estimated
  revenue from a patent (license or sale)
• Utility model
• Other IPRs

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Statistics

• Growth in Patent Activity
• Worldwide filings of patent applications have
  grown at an average annual rate of 4.7 since
  1995 to a total of more than 1.6 million in 2005.
  
• Patents granted worldwide have increased at an
  average annual rate of 3.6 to about 600,000 in
  2005.
• At the end of 2005, there were approximately 5.6
  million patents in force worldwide.
• Increasing Internationalization
• The use of the patent system internationally has
  increased markedly in recent years.
• This can be seen in the growth rate of total
  patent filings by non-residents (7.6 over 2004)
  and in the increase in non-resident patent
  filings in countries such as China, India,
  Mexico, the Republic of Korea and the Russian
  Federation. However, the use of the patent system
  remains highly concentrated with only five patent
  offices (China, Japan, the European Patent
  Office, the Republic of Korea and the United
  States of America) accounting for 77 of all
  patents filed and 74 of all patents granted.
• Increased use of the Patent Cooperation Treaty
  (PCT)
• The PCT has become the major route for
  international patent filing. The number of PCT
  international applications increased by 7.9 from
  2005 to 2006 to reach 147,500. PCT national phase
  entries account for 48 of worldwide non-resident
  patent filings.
• Processing of Patent Applications
• Increasing demand has led to increases in
  workload in some patent offices, although the
  number of patent applications pending examination
  differs significantly from one office to another.
  The United States of America had more than
  900,000 pending applications in 2005, with Japan
  having the next largest number of pending
  applications (according to available data).
• Increasing Patent Filings in the Technical Field
  of Electricity and Electronics
• Patent applications filed in the field of
  electricity and electronics represented 35 of
  worldwide patent filings between 2000 and 2005.
  Patent filings in this technology field are
  concentrated in the patent offices of Japan and
  the United States of America followed by the
  Republic of Korea, the European Patent Office and
  China.

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Resident filings per capita
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Technical fields
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Top 20 Patent offices
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Non-resident filings
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Purpose of patents

• Incentive to innovate
• Incentive to innovate around
• Incentive to disclose
• Monopoly in exchange for disclosure
• After patent term free for everyone to use
• no doubling of research efforts
• collective memory of the research community -gt
  inventions are not forgotten

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Patenting, basics

• Basically three phases
• formal examination
• Substantive examination (novelty, inventive step)
• grant
• Appeal possible if not granted
• Here emphasis on substantive examination
• It should be remembered that a patent is not once
  and for all valid just because it has been
  granted
• invalidity proceedings in civil court
• often in response to infringement proceedings

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How to get a patent

• Application
• National (any country, also US, Japan)
• EPC european patent
• PCT (Patent Cooperation Treaty)

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Patent application

• The application must contain
• a request for the grant of a European patent
• a description of the invention
• problem solution
• The invention as claimed should be disclosed in
  such a way that the technical problem, or
  problems, with which it deals can be appreciated
  and the solution can be understood.
• shall describe at least one way of carrying out
  the invention
• can be used in the interpretation of the claims
• one or more claims
• defines the scope of protection
• drawings referred to in the description or the
  claims
• can be used in the interpretation of the claims
• abstract
• no legal effect
• may not be used in the interpretation of the
  claims

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Claim types

• Different "categories" of claim
• Physical entity
• Product (including Product-by-process claims)
• Apparatus
• E.g. substance or compositions (e.g. chemical
  compound or a mixture of compounds) as well as
  any physical entity (e.g. object, article,
  apparatus, machine, or system of co-operating
  apparatus)
• Activity
• Process
• Use
• For the purposes of examination, a "use" claim in
  a form such as "the use of substance X as an
  insecticide" should be regarded as equivalent to
  a "process" claim of the form "a process of
  killing insects using substance X".
• E.g. all kinds of activities in which the use of
  some material product for effecting the process
  is implied the activity may be exercised upon
  material products, upon energy, upon other
  processes (as in control processes) or upon
  living things
• Often claims in more than one category are needed
  for full protection.
• In fact, there are only two basic kinds of claim,
  viz. claims to a physical entity (product,
  apparatus) and
• two-part form
• wherever appropriate
• first part subject matter prior art
• second part characterising part what is novel
  (what the invention adds to prior art)
  (characterised by)

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Independent and dependent claims

• All applications contain one or more independent
  claims directed to the essential features of the
  invention.
• Such claims may be followed by one or more claims
  concerning "particular embodiments" of that
  invention.
• Any claim which includes all the features of any
  other claim is termed a "dependent claim". Such a
  claim must contain, if possible at the beginning,
  a reference to the other claim, all features of
  which it includes. Since a dependent claim does
  not by itself define all the characterising
  features of
• a dependent claim may refer back to one or more
  independent claims, to one or more dependent
  claims, or to both independent and dependent
  claims.
• Example, see below (hair treatment device)

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Support in description

• EPC article 84
• The claims shall be clear and concise and be
  supported by the description.
• There must be a basis in the description for the
  subject-matter of every claim and that the scope
  of the claims must not be broader than is
  justified by the extent of the description and
  drawings and also the contribution to the art.
• Most claims are generalisations from one or more
  particular examples. The extent of generalisation
  permissible is a matter which the examiner must
  judge in each particular case in the light of the
  relevant prior art.
• invention which opens up a whole new field, more
  generality in the claims
• Not too broad claims (goes beyond the invention),
  nor too narrow (deprives the applicant of a just
  reward for the disclosure of his invention).
• Allowed to cover all obvious modifications
  (equivalents)

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Unity of invention

• EPC article 82
• The European patent application shall relate to
  one invention only or to a group of inventions so
  linked as to form a single general inventive
  concept
• One application, one invention (or group of
  inventions)!
• One invention may however contain several claims.
• An application may, e.g. contain product claims
  and process claims
• E.g. A Claim 1 Product for cutting hair,
  characterized in that Claim 2 Method of
  cutting hair wherein a product as specified in
  claim 1 is used.

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Sufficiency of disclosure

• EPC article 83
• The European patent application must disclose the
  invention in a manner sufficiently clear and
  complete for it to be carried out by a person
  skilled in the art.
• The purpose of the provisions of Art. 83 and Rule
  27 is
• to ensure that the application contains
  sufficient technical information to enable a
  skilled person to put the invention as claimed
  into practice
• to enable the reader to understand the
  contribution to the art which the invention as
  claimed has made.

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Person skilled in the art

• Ordinary practitioner aware not only of the
  teaching of the application itself and the
  references therein, but also of what was common
  general knowledge in the art at the date of
  filing the application.
• He is assumed to have had at his disposal the
  means and the capacity for routine work and
  experimentation, which are normal for the
  technical field in question.
• As "common general knowledge" can generally be
  considered the information contained in basic
  handbooks, monographs and textbooks on the
  subject in question. As an exception, it can also
  be the information contained in patent
  specifications or scientific publications, if the
  invention lies in a field of research which is so
  new that the relevant technical knowledge is not
  yet available from textbooks.
• How much would an ordinary practitioner know?
  Probably not much about what is said in patents,
  but probably what is said in basic handbooks etc.
• It has been said that the person skilled in the
  art is the mean of all practitioners in the field
  at hand.

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Hair treatment device
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Patent Cooperation Treaty

• Multilateral treaty
• concluded in Washington in 1970, entered into
  force in 1978.
• Administered by the International Bureau of the
  World Intellectual Property Organization (WIPO),
  whose headquarters are in Geneva (Switzerland)
• Makes it easier to get a great number of national
  and regional (e.g. EPC) patents.
• One patent application (the international
  application) instead of filing several separate
  national and/or regional patent applications.
• Still necessary to prosecute the international
  application in the national phase of processing
  before the national or regional Offices, but
  makes it easier.
• formalities check
• international search
• (optional) international preliminary examination
• 137 Contracting States (including USA, Japan and
  EU members)

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Benefits of PCT

• Saves time money, if need for patent in a great
  number of countries (e.g. if they are not members
  of the EPC)
• one application in one place, in one language and
  pays one initial set of fees
• The international application has the effect of a
  national or regional application, which, without
  the PCT, would have to be filed separately for
  each country or region.

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International National Phase

• International phase
• Three mandatory steps and one optional
• 1. Filing of the international application, and
  its processing by the receiving Office,
• 2. International search report and written
  opinion, and the publication of the international
  application together with the international
  search report.
• 3. Communication of the published international
  application and the international search report
  to the national (or regional) Offices which the
  applicant wishes to grant him a patent on the
  basis of his international application.
• Optional 4. International preliminary
  examination, and international preliminary report
  on patentability.
• analyses aspects of the general patentability of
  the invention.
• also communicated to the national (or regional)
  Offices

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National Phase

• After the international phase, further action is
  required before and in each of the
  national/regional Offices which the applicant
  wishes to grant him a patent on the basis of his
  international application.
• Payment of national (or regional) fees,
• translations that are required
• appoint a representative (patent agent) where
  required.
• time limits by which those steps must be taken if
  the application is to proceed in the national
  phase (see paragraphs 29 to 31, 46 and 47).
• It is up to the applicant to decide whether and
  when to enter the national phase before each
  national (or regional) Office.
• The outcome is a bunch of nationai or regional
  patents

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European Patent Convention

• The European Patent Organisation is an
  intergovernmental organisation that was set up in
  1977 on the basis of the European Patent
  Convention (EPC) signed in Munich in 1973.
• Two bodies
• the European Patent Office
• the Administrative Council, which supervises the
  Office's activities.
• European patents can be granted for the 32
  contracting states to the European Patent
  Convention (EPC) and at the applicant's request
  can be extended to Albania, Bosnia and
  Herzegovina, Croatia, the Former Yugoslav
  Republic of Macedonia, and Serbia.
• The application must stipulate the countries for
  which protection is sought.
• European patents are turn into a bundle of
  national patents.

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Patentable inventions

• Invention is not defined in EPC art 52
• But it has been said that the invention must be
  of "technical character"
• must relate to a technical field
• must be concerned with a technical problem
• and must have technical features in terms of
  which the matter for which protection is sought
  can be defined in the claim.
• Not patentable inventions
• (a) discoveries, scientific theories and
  mathematical methods
• (b) aesthetic creations
• (c) schemes, rules and methods for performing
  mental acts, playing games or doing business, and
  programs for computers
• (d) presentations of information.
• Excluded from patentability only to the extent
  the application relates to such subject-matter or
  activities as such.
• Methods for treatment of the human or animal body
  by surgery or therapy and diagnostic methods
  practised on the human or animal body shall not
  be regarded as inventions . This provision
  shall not apply to products, in particular
  substances or compositions, for use in any of
  these methods.
• EPC art 53
• (a) inventions the publication or exploitation of
  which would be contrary to ordre public or
  morality
• (b) plant or animal varieties or essentially
  biological processes for the production of plants
  or animals this provision does not apply to
  microbiological processes or the products thereof.

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Industrial application

• EPC art 57
• An invention shall be considered as susceptible
  of industrial application if it can be made or
  used in any kind of industry, including
  agriculture.
• "Industry" should be understood in its broad
  sense as including any physical activity of
  "technical character", i.e. an activity which
  belongs to the useful or practical arts as
  distinct from the aesthetic arts
• Does not necessarily imply the use of a machine
  or the manufacture of an article and could cover
  e.g. a process for dispersing fog or for
  converting energy from one form to another.
• Thus, Art. 57 excludes from patentability very
  few "inventions" which are not already excluded
  by the list in Art. 52(2) (see IV, 2.1).
• One further class of "invention" which would be
  excluded, however, would be articles or processes
  alleged to operate in a manner clearly contrary
  to well-established physical laws, e.g. a
  perpetual motion machine.

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Novelty

• EPC art 54
• An invention shall be considered to be new if it
  does not form part of the state of the art is
  there any difference between the invention and
  the known art?
• The state of the art shall be held to comprise
• everything made available to the public
• by means of a written or oral description, by
  use, or in any other way,
• before the date of filing of the European patent
  application.
• No restrictions as to
• geographical location where or
• the language or
• manner in which the relevant information was made
  available to the public
• also no age limit is stipulated for the documents
  or other sources of the information.
• Enabling disclosure is required
• Subject-matter only a part of the state of the
  art, if the information given to the skilled
  person is sufficient to enable him, at the
  priority date (application date), to practise the
  technical teaching which is the subject of the
  disclosure.
• Not permissible to combine separate items of
  prior art together (save clear references to
  other documents)
• A document takes away the novelty of any claimed
  subject-matter derivable directly and
  unambiguously from that document
• New use of a known substance/compound is novel
• The provisions of paragraphs 1 to 4 shall not
  exclude the patentability of any substance or
  composition, comprised in the state of the art,
  for use in a method referred to in Article 52,
  paragraph 4, provided that its use for any method
  referred to in that paragraph is not comprised in
  the state of the art.
• Selection inventions

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Non-prejudicial disclosures

• EPC art 55
• (1) For the application of Article 54 a
  disclosure of the invention shall not be taken
  into consideration if it occurred no earlier than
  six months preceding the filing of the European
  patent application and if it was due to, or in
  consequence of
• (a) an evident abuse in relation to the applicant
  or his legal predecessor, or
• (b) the fact that the applicant or his legal
  predecessor has displayed the invention at an
  official, or officially recognised, international
  exhibition falling within the terms of the
  Convention on international exhibitions signed at
  Paris on 22 November 1928 and last revised on 30
  November 1972.

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Inventive step

• EPC art 56
• An invention shall be considered as involving an
  inventive step if, having regard to the state of
  the art, it is not obvious to a person skilled in
  the art.
• Would it have been obvious to the person skilled
  in the art to arrive at something falling within
  the terms of the claim before the priority date?
• "obvious" that which does follow plainly or
  logically from the prior art.
• A combination of features, even if the features
  taken separately are known or obvious, may be
  non-obvious.
• Possible indicators of inventive step
• the formulation of a new idea or of a yet
  unrecognised problem to be solved (the solution
  being obvious once the problem is clearly stated)
• the devising of a solution to a known problem
• the arrival at an insight into the cause of an
  observed phenomenon
• (the practical use of this phenomenon then being
  obvious)

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Inventive step (2)

• Problem-and-solution approach
• (i) determine the "closest prior art
• The closest prior art is that combination of
  features, disclosed in one single reference,
  which constitutes the most promising starting
  point for an obvious development leading to the
  invention.
• (ii) establish the "objective technical problem"
  to be solved,
• one studies the application (or the patent), the
  closest prior art and the difference in terms of
  features between the invention and the closest
  prior art and then formulates the technical
  problem.
• (iii) consider whether or not the claimed
  invention, starting from the closest prior art
  and the objective technical problem, would have
  been obvious to the skilled person.
• Could-would approach
• the point is not whether the skilled person could
  have arrived at the invention by adapting or
  modifying the closest prior art, but whether he
  would have done so
• combining prior art documents is allowed