Patent Fundamentals

Dominic De Groote

Sociomicrobiology CourseMarch 1st, 2010

WHAT IS A PATENT ?

What is a patent ?

• Legal document transforming a creation of the human mind into property

• A patent is the strongest Intellectual Property Right (IPR)

• Other forms of IPR: – Copyrights ©– Trademark rights ® – Database rights, plant breeders’ rights, …

What is a patent ?

• patent rights are the strongest intellectual property rights:– an absolute right (not necessary to prove

copying)– an exclusive right (a negative right which

excludes or prevents but does not enable)– and is registered (needs to be filed at a

patent office)

• a patent is like a contract with the State

What is a patent ?

• Contract with the state (“quid pro quo”):– complete and public disclose of the invention

(publication of patent after 18 months)– invention must be a contribution to industry

compared with what is known – invention is given to the public after 20 years

from filing of the patent application– in exchange the owner of the patent is given an

exclusive license (“monopoly”) to the invention by the state

A little history …The first known patent was granted by the English King Henry VI to Flemish-born John of Utynam in 1449. The patent called a “Letter Patent” gave John a 20-year monopoly for a method of making stained glass, required for the windows of Eton College that had not been previously known in England

What is a patent ?

• Patent rights are granted through patent systems organised by national patent laws

• Multiple national patent laws -> multiple different patent systems

• A “world patent” does not exist !

In summary …

A patent:• a legal document protecting inventions• creates property (intangible asset)• a quid pro quo deal with a state: the

inventor discloses, the state grants a monopoly right

• a national right

WHAT DOES A PATENT PROVIDE ?

What does a patent provide?• STOP all public or commercial activities

regarding products or methods claimed in a granted patent (= injunction)

• earn license fees• cross-licensing• recognition by scientists and industry• source of info (80% of all technical

information)

What does a patent provide ?The patent gives the patentee the right to prohibit all third parties not having his consent:a) from making, offering, putting on the market or using a PRODUCT which is the subject matter of the patent, or importing or stocking the product for these purposes;

What does a patent provide ?b) from using a PROCESS which is the

subject matter of the patent or, when the third party knows, or it is obvious in the circumstances, that the use of the process is prohibited without the consent of the proprietor of the patent, from offering the process for use within the territory where this law applies

What does patents provide ?c) from offering, putting on the market,

using, or importing or stocking for these purposes the PRODUCT obtained DIRECTLY BY A PROCESS which is the subject matter of the patent (f.e. via a specific chemical process)

What does a patent provide ?• INFRINGEMENT means an

encroachment upon the domain belonging to a patent owner that is described by the claims of a patent

• patent infringement is not a crime, patent owner has to use expensive and sometimes unreliable court procedures to enforce the right

Patent rights may be compared to real property rights. If a patent is like real property, such as land, the claims of the patent correspond to the boundary of the property as described in the deed. Similar to the land boundaries, the claims of a patent describe the boundary and scope of the patent rights. Similar to trespass, which is the invasion of the boundaries of the landowner, patent infringement is the invasion of the boundaries the patent owner's patent rights

What does a patent provide ?• Research exemption !! (depends on

nation) Art. 28 § 1 (b) (Belgian Patent Law)

stipulates that the rights of a patent holder do not extend to acts carried out for scientific purposes on or with the subject matter of the invention

PATENT ANATOMY

Patent Anatomy

• Cover sheet: bibliographic data• Description (Specifications) +

Drawings• Claims !!

Patent Anatomy

CLAIMS: – define the legal scope

(boundaries) of the patent. Every extra feature limits the scope. That means few features = few limitations = broad scope

– “legal destillation” of the description part

– always have to be read in combination with the description

Patent Anatomy

• DESCRIPTION and DRAWINGS:– provide specific examples of the

invention sufficient for a person-skilled-in-the-art to implement (reproduce) the claimed invention. Description should be detailed enough so that any technical doubts can be resolved

– in US “best mode” requirement– strategic text (f.e. demining prior art)– “Examples” part !

Patent Anatomy

• Bibliographic data (searching !): – names (applicant, inventors)– numbers (application, publication)– dates (filing, publishing)– Classes (classification)– Other

WHAT IS A PATENTABLE ?

US Supreme Court“… Anything under the sun that is

made by man.”

Diamond v. Chakrabarty, USPQ 193, 196 (US 1980)

What is patentable ?

An INVENTION !

What is patentable ?

• No agreed definition of an invention• A patentable invention is not a

discovery nor an idea but can be the industrial application of a discovery or an idea

• A patentable invention must be a technical solution to a problem

EPC Article 52: Patentable inventions

(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

(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.

…(4) Methods for treatment of the human or animal body by

surgery or therapy and diagnostic methods practiced on the human or animal body shall not be regarded as inventions which are susceptible of industrial application within the meaning of paragraph 1. This provision shall not apply to products, in particular substances or compositions, for use in any of these methods.

What is patentable ?

• A method for treating Disease X, comprising administering an effective amount of compound Y to a patient– No– Use of compound Y for treating cancer

disease– Use of compound Y for preparation of a

medicament for treating cancer disease– Use of compound Y for the amelioration of

the effects of disease X

What is a patentable invention ?Legal requirements of a patentable invention: • technical and reproducible• Novel (= not known before the filing date)• Inventive (= not obviously derivable from what was known before the filing date)• Industrially applicable• Not excluded as a matter of public policy

What is a patentable invention ?• Technical : difficult to define. Should not be

an abstract concept such as a mathematical method, a law of nature, a work of art, a business method, rules of a game

• Reproducible: a skilled person must be able to carry out the invention based on common technical knowledge. The invention must be repeatable

What is a patentable invention ?• NOVELTY:

– an invention must be absolutely new, that is the exact same details must not have been described by any method of publishing before the filing date of the patent application

– the test is applied strictly - the slightest difference can provide novelty - separate documents may not be combined

What is a patentable invention ?• INVENTIVITY (“inventive step”, “non-

obvious”):– an invention must not be derivable from

what is known in a trivial manner– there must be no hints or suggestions

already made known which suggest the invention

– documents can be combined– the reference is a fictitious “skilled person”

What is a patentable invention ?• State of the art:

– ANY type of disclosure made anywhere in the world in any language

– e-mails, videos, letters, publications, verbal disclosures, TV programmes, newspapers, books, presentations, poster sessions, defence of PhD

What is a patentable invention ?•Claims define the invention, so

these must define:- technical, novel, inventive and

industrially applicable subject matter which is not excluded as a matter of public policy

• Two types of claims: – independent claims (do not refer to

another claim)– dependent claims (refer to another claim)

©Bird Goën & Co September 1998

CLAIMS define the subject matter for which protection is sought =======> define the PROTECTION SCOPE of the patent

PRIOR ART CLAIM

Novelty: independent claims must be different from anything in the public domain before the filing date/priority date

©Bird Goën & Co

Inventive: there must also be a certain technical distance or inventive step

©Bird Goën & Co

1. Can with features A, B, C. (metal, cylindrical, clip) (i.e. round + polygonal)2. Can according to claim 1 with feature D. (A+B+C+D)3. Can according to claim 2 with feature E. (A+B+C+D+E)4. Can according to claim 1 with feature F. (A+B+C+F)

Prior art: can, metal, cylindrical round, clip. New, more restricted claim 1: can, metal, cylindrical polygonal, clip.

PRIOR ART

CLAIM

3

CLAIM 2 CLAIM 4

Help, air !

• Patents are legal property documents• A patent protects an invention• An invention is a technical solution to

a problem• The invention is defined in a claim• A claim has to be novel and inventive

WHY PATENT ?

When not to patent ?

• “It is mine”: to block research competitors -> too costly, not effective

• “I’ve got a patent”: prestige -> buy an expensive car, it’s cheaper

• “It benefits my career”: if that is the only purpose, spillage of money

• “I want to get rich quick”: dream on

Why patent ?

• Block competitors to bring a similar product / service to the market

• To make profits through licensing or cross-licensing deals

• To protect long-term R&D efforts (f.e. Drug development)

• To create an economic asset to create value (capitalization of spin-offs)

1. Innovation/development

2. Patenting strategy Filing programPublicationExamination

3. Patent prosecutionAmendmentsIssuance

4. Regulatory Track

5. Commercialization

6. Infringement/validity

IP TRAIL

GETTING STARTED

Getting started ...

STEP 1: Safeguard your invention• You have valuable research results• keep confidential within your

organisation• use Non-Disclosure Agreement (NDA)

with outsiders !• don’t brainstorm in public• think before you speak, write, show and

tell outside your company/organisation

Getting started ...

STEP 2: What’s the problem ?• Do these results comprise a technical

solution to a problem ?• Are there multiple problems which are

solved by the same results ?• Is the solution to one or more of these

problems commercially relevant ?• What are practical applications resulting

from the invention ?

Getting started ...

STEP 3: Am I allowed to patent ?• Who owns the intellectual property

rights ? (by statue, contracts, ...)• Am I the only owner of the IPR ? • In case of co-ownership, who is

designated to file a patent appication ?

Getting started

In case of multiple owners without agreements, first negotiate an IP

sharing agreement !

Getting started ...

STEP 4: Legal requirements check• Is my invention novel ?

– PRIOR ART Check !! Not only in scientific literature, dig into patent literature. Identify the “closest prior art document”

• Is my invention inventive ? – What features make my invention non-obvious

over the prior art for a person-skilled-in-the-art ? – How big is the inventive step ?

Getting started ...

STEP 5: Get help ...• Disclose your invention to authorized

department in your organisation– AUGent = UGent TechTransfer– Fill in the “invention disclosure form”

• Brainstorming session

Getting started ...

INVENTORSHIP- Inventorship is NOT the same as authorship !- An inventor is anyone who contributed to the

intellectual conception of an invention (= claims)

- In the US, it is the right of an inventor to file a patent. Not naming inventors can have serious legal consequences (considered as fraude) !

Getting started

STEP 6: Drafting a patent application

• Drafting patent applications require expertise (f.e. patent attorney’s) but is not a formal requirement.

• Regular patent application can only be filed by registered patent attorneys !

Getting started ...

PATENT or PUBLISH ?• Both ! The moment a patent application has

been filed, one can publish his results as long as the disclosed information doesn’t differ from the information in the patent apllication

• However, it is best practice to try to keep the information confidential at least 12 months following the first filing.

FILING A PATENT APPLICATION ...

Filing a patent application• Territoriality principle: patent only

valid in a country where or for which you have filed a patent application and the responsible patent office has granted the patent

• Filing routes: national (BE, USA, JP), regional (European), international (PCT)

Filing a patent application ?• In theory, an inventor should file at

day 1 for each desired country a separate patent application -> not practical !

Filing a patent applicationCLAIMING PRIORITY• Priority is covered by an international

agreement called the Paris Convention • The idea behind priority is that one patent (or

trademark etc.) application is deposited in one member state of the Paris Convention and within 12 months the same invention may be filed in other member states of the Paris Convention claiming the filing date of the first application

Filing a patent application• Priority document must be enabling disclosure

– cannot file a priority document describing an “idea” and “work out the details of the invention” during the priority year

– can use “constructive reduction to practice” - write detailed description even if no practical tests done

– guessing correctly is probably OK (in Europe) • priority document did not give clinical tests of capability

to produce antibodies in humans only in rabbits. Plausible that same effect would be generated in humans

Filing a patent application• The PCT differs from all other patenting as it does not

result in a granted patent itself• It is only a method of reserving the possibility of filing

national patent applications in all major countries for a time up to 30 months at a reasonable price

• This delay is often useful as it can allow the market situation to be clarified and the product design to be finalised

• The procedure also provides a search report and optionally an examination report. These are generally non-binding.

• At the end of the procedure the application enters national systems for further processing (as if they were first filed)

PATENT OFFICE

Prepare the application

Search

Examination

Examination of the modifications

Grant of the patent

Modifications

INVENTOR

Filing a patent application

“first-to-file” versus “first-to-invent”• In the US, priority is given to the

person(s) who has first invented an invention

• In non-US patent systmes, priority is given to the person that first files a patent application

• Importance of notebooks in US

Filing a patent applicationA PROVISIONAL APPLICATION• Provides a priority date (filing date with USPTO,

UKPTO) with fewer requirements, but a follow-up nonprovisional must be filed within one year.

• Other Requirements– written description– enablement– best mode (US only)

• Cheap but risky. Document has to contain all information necessary to claim a broad scope

• Often used as emergency filing or for cost reduction

Filing a patent

• Average costs (incl. BTW):– Drafting + filing priority application -> 5000

– 9000 €– PCT (additional 20 months): 4000 – 7000 €– National phases (depending on country): f.e.

European patent: 40.000 – 50.000 € (granting + validation in 10 European countries)

• Average time: 4-6 years in Europe (EP-PCT route)

Recommended reading

• Patent Law Essentials: A Concise Guide Second Edition (Allen L. Durham)

• Patent Strategy: For Researchers and Research Managers (H. Jackson Knight)

What’s next ?

• Introduction to filing strategies• How to search prior art • Infringment of patents• Freedom-to-operate analysis