SEMINAR II: PATENTS

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SEMINAR IIPATENTS

• GROUP 5
• CHANCHAI LAOARAYA
• ERLA SKULADOTTIR
• GERTRAUD KOPF
• LUCIA FUENTES
• MICHAEL PITZER-BRUUN
• THOMAS MUNK RASMUSSEN

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SUMMARY QUESTION

• The effects of disclosure of an invention prior
  to patent application are different in Europe
  compared to the U.S. In this context, the
  possibility to make use of a grace period is one
  of the important points in the debate of
  international harmonisation of patent law. If an
  application for patent protection is first filled
  in the U.S., is it possible to later claim
  protection in Europe based on the principle of
  convention priority? Please explain and analyse
  the impact of the first-to-invent principle and
  the grace period on the novelty of invention of a
  European patent application claiming priority
  date on the basis of an earlier U.S. application

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INTRODUCTION

• Inventions that contribute to society benefit
  from legal protection. The patentee shares his
  knowledge with the public and in exchange he is
  entitled to exclude others from manufacturing,
  selling, offering or using the invention without
  permission
• Before protection is granted the invention is
  examined as regards differing from prior art
  which is already disclosed to the public. Well
  established ideas available to the public who are
  resumed prior art or state of the art are
  opposing patent protection

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EFFECTS OF DISCLOSURE OF AN INVENTION PRIOR TO
PATENT APPLICATION

• Novelty is one of the requirements for
  patentability of an invention
• In European Patent Law novelty is meant in the
  absolute sense (whenever the applicant makes the
  invention available to the public anywhere in the
  world, it is assumed that the novelty is
  destroyed)
• In relation to U.S. Patent Law this matter is
  covered by Title 35 102 U.S. Code
• Both in U.S. and European Patent Law disclosure
  implies that a larger non defined number of
  persons have had the possibility to become
  acquainted with the invention in a way that would
  enable a person skilled in the art to perform the
  invention

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GRACE PERIOD

• Recognised traditionally by the U.S.
• Heals the consequences of a rash or inconsiderate
  publication
• Offers 6 or 12 months in which a patent
  application may be filled in spite of the
  previous disclosure of the invention as a result
  novelty is not destroyed
• The EPC and Member States only offer this period
  in two specific cases (Art.55 EPC)

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PARIS CONVENTIONPRIORITY RIGHT

• Defined by Art.4A(1) Paris Convention
• - Any person who has duly filed an application
  for a patent........in one of the countries of
  the Union, or his successor in title, shall
  enjoy, for the purpose of filing in the other
  countries, a right of priority during the periods
  hereinafter fixed"
• Time-limited right-usually 12 months- for the
  purpose of filing the patent application in other
  countries
• Belongs to the applicant or his successor in title

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TRIPS AGREEMENT

• The TRIPS Agreement in conjunction with the Paris
  Convention
• Article 2 of the TRIPS Agreement
• WTO members do not need to ratify the Paris
  Convention they should, however, comply with
  articles 1 through 12 and article 19 of the Paris
  Convention
• In the European Patent Convention article 87(1)
  priority right is recognised for first filings in
  or for States party to the Paris Convention
• A U.S. patent application may therefore, due to
  the U.S. adherence to both the Paris Convention
  and the TRIPS, be used to claim priority in
  relation to an EPC application

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TWO DIFFERENT APPROACHES

• Generally, when comparing the first-to-file and
  the first-to-invent approaches it has to be
  considered that both bare advantages and
  disadvantages to the applicant. The European
  system serves the public by providing maximum
  protection of legal certainty. The filing date
  will hardly ever be tested in contrast to the
  date of invention. However, the American system
  supports small companies and individuals better
  by providing them with immediate protection while
  the European system demands rapid - and often
  cost intensive - patent application. Still, one
  must keep in mind that the American system might
  favour the individual inventor but as soon as a
  conflict arises he also has to engage in costly
  interference proceedings

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FIRST-TO-FILE SYSTEM

• Used in the majority of countries, with the
  notable exception of the United States
• The right to the grant of a patent for a given
  invention lies with the first person to file a
  patent application for protection of that
  invention, regardless of the date of actual
  invention
• The inventor loses the right to patent an
  invention if the invention is disclosed to the
  public at any time prior to the date of filing of
  the patent application

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FIRST-TO-INVENTSYSTEM (U.S.)

• Patent right granted to the first inventor or an
  authorised person
• The relevant date for ascertaining the novelty of
  the invention is the actual date of the invention
• In order to be able to claim a right under the
  "first-to-invent" principle the person claiming
  to be the inventor has to prove
• that he is the person who first conceived of the
  invention
• provided that he diligently worked to reduce the
  invention to practise from the moment of
  conception to the date of filing the patent
  application

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FUTURE PERSPECTIVEHARMONISATION?

• U.S. says about EU-system
• the uneducated inventor may inadvertently
  disclose his invention before filing and thereby
  forever forfeit the right to patent protection by
  having prior published himself
• it deprives the individual of the opportunity
  first to publish his invention and thereby test
  the water in terms of its commercial potential
  before committing to the expense of the patenting
  procedure

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FUTURE PERSPECTIVEHARMONISATION?

• EU says
• The first-to-file system has the great benefit
  of certainty - the first-to-invent system does
  not
• Regardless of the U.S. regime, for practical
  purposes if the inventor wants to obtain foreign
  patent cover as well as domestic U.S., he must
  file first otherwise his U.S. publication (which
  is protected only for U.S. domestic filing) will
  prior publish him in the rest of the world
• The first-to-file system does permit a level of
  prior publishing. For example, at recognised
  Trade Exhibitions Art. 55 EPC

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CONCLUSION

• If the applicant as the inventor has disclosed
  his invention in the US and has made use of his
  12 months grace period to file for US patent
  protection
• He can in theory file for a European Patent
  basing its priority on the US application
• However, the disclosure of the invention in the
  US which is not novelty destroying in the US will
  be novelty destroying in Europe
• The inventor will thereby be prevented from
  obtaining patent protection in Europe. In Europe
  the invention will therefore due to the prior
  disclosure be considered to be a part of the
  prior art