www.abertay.ac.uk introduction to patents anatomy of a patent & procedures for getting a patent...

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Introduction to Patents

Anatomy of a Patent & Procedures for Getting a Patent

Margaret Hartnett

Commercialisation & IP Manager

University of Abertay Dundee

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Some Basic Points

• Social Contract:

Exclusive Right to the Patentee in exchange for FullDisclosure of the Invention to the Public

• Patent rights for 20 years

• Patents for specific territories

• Process is lengthy and rigorous

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What goes into a patent?

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Basic Requirements for Patentability

For something to be patentable, it must be:

• AN INVENTION (i.e. NOT EXCLUDED SUBJECT-MATTER)

• NOVEL

• INVENTIVE

• INDUSTRIALLY USEFUL

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Statutory Exclusions in Europe

NOT inventions under the EPC

• Discoveries, Scientific theories, Mathematical Methods

• Aesthetic creations

• Schemes, rules and methods for:• performing mental acts• playing games• doing business

• Programs for computers (computer implemented inventions)

• Presentation of information

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Per Se Caveat

If Patent Claim solely comprises an excluded subject-matter, there is no invention => not patentable

But

If Patent Claim includes patentable subject-matter AND excluded subject-matter there is an invention => may be patentable

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Computer Program Patentability

Computer program NOT excluded from patentability if, when running on a computer, it causes a further "technical effect" going beyond the "normal" physical interaction (e.g. electrical current) between the program & the computer [T1173/97]

Examples of Further Technical Effect•Control of a technical process or device

•Processing data which represent physical entities

•Control of the internal functioning of the computer itself

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Novelty

Invention must be new at the date of filing a patent application

GENERAL RULE: Invention should NOT be disclosed to public before filing patent application.

Disclosure• not just in writing

• anywhere in the world

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Inventive Step

GENERAL PRINCIPLE• Invention must be more than mere obvious

modification of existing technology

Or in other words….

Invention must not be obvious to a person skilled in the relevant technical field in view of everything that was publicly known before the filing date of the patent application

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Industrially Useful

Must be capable of being

MADE or USED

in any kind of industry

Not necessarily use of a machine or manufacture of an article => i.e. invention must simply be useful in some way

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Exceptions from Patentability Under the EPC

• Inventions whose commercial exploitation would be contrary to "ordre public" or morality

• Plant or animal varieties or essentially biological processes for the production of plants or animalso microbiological processes and products thereof => not excluded

• Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body o products, substances & compositions for use in such methods => not

excluded

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Where can a patent application be filed?

3 possible filing routes

1. National patent offices• National patent valid only in that country

• one procedure according according to National Law

2. European Patent Office (EPO)• one application filed at one office for 37 member states (+ 3 extension states)

• one procedure according to the European Patent Convention

• cost depends on number of countries chosen

3. Patent Cooperation Treaty (PCT)• one application filed at one office for 142 contracting states

• one procedure according to the PCT (during an international phase) => multiple national patent examination procedures

• costly patenting decisions can be delayed by up to 30-31 months after filing

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Overview of Patent Prosecution Procedure

• Formalities

• Search

• Publication

• Substantive examination

• Grant

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Rights Conferred by a Patent

• Determined under National Law

• In the United Kingdom:

• Right to prevent third parties direct use of the invention by:• If invention is a product

making, disposing of, offering to dispose of, using, importing, or keeping (i.e. stocking) the product

• If invention is a process

using or offering the process for use in the UK when the party knows, or it is obvious to a reasonable person in the circumstances, that the use of the process is prohibited without the consent of the patentee; or

disposing of, offering to dispose of, using or importing or keeping (i.e. stocking) a product obtained directly by way of the process

– Patent owner can sell these rights or license them like any other form of property.

– A Patent does NOT grant the right to use the invention => patent search is necessary