can i patent this? the invention process and its pitfalls

Can I patent this? The invention process and its pitfalls

Can I patent this?

• What is a Patent?

Can I patent this?


• Invention

Can I patent this?


• Invention

• Exceptions

Can I patent this?


• Invention

• Exceptions

• Getting a patent

Can I patent this?


Can I patent this?


– A Patent is a legal document conferring on its holder, for a fixed period,* the right to exclude all others from exploiting (e.g. making, selling, using, importing) the disclosed invention, save with the holder’s consent.†

* Usually 20 years from filing date (Ireland, EPO).

† See Irish Patents Act, 1992, Chapter VI; European Patent Convention Article 64

Can I patent this?


– A Patent is a technical document, which “must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.”(Irish) Patents Act, Section 19(1)

Can I patent this?

• Quid pro quo.

– For a full disclosure, the patentee gets a monopoly.

Can I patent this?

• Origins– Letters patent - an open document from a sovereign

or government conferring a right.• Patent - ME f. OF patent and L. patere (lie open)

Can I patent this?

• A bit of history...

Can I patent this?

• A bit of history...– 1421: Filippo Brunelleschi: a hoisting apparatus for loading &

unloading marble blocks from ships.

7 year monopoly granted by City of Florence.

Can I patent this?




– 1449: John of Utynam: method of staining glass.

Flemish, granted 20 year monopoly on condition that he taught his art to English apprentices.

Can I patent this?






– 1474: City of Venice: prohibited unauthorised copying of inventions (10 year monopoly, infringers fined 100 ducats).

Can I patent this?






– 1474: City of Venice: prohibited unauthorised copying of inventions (10 year monopoly, infringers fined 100 ducats).

– 1624: Statute of Monopolies: 14 year monopoly to “first and true inventor”.

Can I patent this?

• Patentability– An invention shall be patentable… if it is

susceptible to industrial application, is new and involves an inventive step. IPA, S9(1)

Can I patent this?



– New = novel

Can I patent this?



– New = novel

– Inventive step = not obvious

Can I patent this?


susceptible to industrial application, is new and involves an inventive step. IPA S9(1)

– New = novel

– Inventive step = not obvious

– Susceptible to industrial application = technical in character

Can I patent this?

• Novelty

Can I patent this?

• Novelty– An invention shall be considered new if it does not

form part of the state of the art. IPA S11(1)

Can I patent this?

• Novelty– An invention shall be considered new if it does not

form part of the state of the art. IPA S11(1)

• State of the Art– …[comprises] everything available to the

public... by means of an oral or written description, by use, or in any other way, before the date of filing of the patent application. IPA S11(2)

Can I patent this?

• Prejudicial disclosure

Can I patent this?

• Prejudicial disclosure– Previous patents/applications*

* But NOT EPC Applications already filed, prior to publication, designating different contracting states

Can I patent this?


– Scientific publications


Can I patent this?



– Newspaper articles


Can I patent this?




– Public demonstrations†


† But NOT Official Exhibitions recognised by Paris Convention (<6 months before filing)

Can I patent this?





– Sale/distribution of embodiments



Can I patent this?





– Sale/distribution of embodiments

– Conversation!* But NOT EPC Applications already filed, prior to publication, designating different contracting states


Can I patent this?

• Inventive step

Can I patent this?

• Inventive step– 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. IPA S13

Can I patent this?

• Inventive step– 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. IPA S13

• Skilled person– A hypothetical individual, fully versed in state of

the art in the relevant field of technology at date of filing, but unimaginative.

Can I patent this?

• Lack of invention

Can I patent this?

• Lack of invention– Application of known measures

• e.g. elastic vs. sprung component

Can I patent this?



– Obvious combinations of features• sausage machine = known mincer + known filler

Can I patent this?



– Obvious combinations of features• sausage machine = known mincer + known filler

– Obvious selection• temp/pressure criteria arrived at by routine trial and

error

light bulb toothbrush

Can I patent this?

• Industrial susceptibility (applicability)

Can I patent this?

• Industrial susceptibility (applicability)– An invention shall be considered as susceptible of

industrial application if it can be made or used in any kind of industry, including agriculture.IPA S14

Can I patent this?



• Industry– Any activity of “technical character”.

Can I patent this?



• Industry– Any activity of “technical character”.

– Feasibility requirement, excludes inventions operating contrary to established physical laws e.g. perpetual motion/time travel machines

Can I patent this?

• Exceptions to patentability

Can I patent this?

• Exceptions to patentability– Scientific theories; mathematical methods/equations

Can I patent this?

• Exceptions to patentability– Scientific theories; mathematical methods/equations– Aesthetic creations (works of art)

Can I patent this?

• Exceptions to patentability– Scientific theories; mathematical methods/equations– Aesthetic creations (works of art)– Methods

Can I patent this?


• playing games (rules)

Can I patent this?



• performing mental acts

Can I patent this?




• doing business

Can I patent this?




• doing business

– Presentation of information

Can I patent this?

• Exceptions to patentability– Scientific theories; mathematical equations/methods– Aesthetic creations (works of art)– Methods



• doing business

– Presentation of information– Computer programs, per se

Can I patent this?

• Exceptions to patentability– Medical treatments/therapies/diagnostic methods

Can I patent this?

• Exceptions to patentability– Medical treatments/therapies/diagnostic methods– Specific animal/plant varieties (UPOV)

Can I patent this?

• Exceptions to patentability– Medical treatments/therapies/diagnostic methods– Specific animal/plant varieties (UPOV)– Inventions contrary to public order/morality

Can I patent this?

• Getting a patent– Where?

Can I patent this?

• Getting a patent– Where is my market?

– Does my product have universal or local appeal?

– How much protection do I need?

– Do the potential costs justify the protection sought?

– How sure am I that I’m the first to have done this?

Priority Esp@cenet Costs

Can I patent this?


• National ((Irish) Patents Office)– Patents for Ireland

Can I patent this?

Can I patent this?

• Getting a patent– National Route

• National ((Irish) Patents Office)– Patents for Ireland only

• Irish PO allows for 2 patent types– Full Term

– Short Term

Can I patent this?


• Full Term» 20 year validity

» Must be supported by search or evidence of novelty

» Enforceable at grant

Can I patent this?


• Full Term» 20 year validity

» Must be supported by search or evidence of novelty

» Enforceable at grant

• Short Term» 10 year validity

» No proof of novelty required prior to grant

» May not be enforced post-grant without proof of novelty

» Reduced fees

Can I patent this?


• European Patent Office (EPO)– European Patent Convention (EPC)

– 32 Member States (EU27 + CH, LI, MC, TR, IS)

– 1 Application covers any or all (nominated) contracting states

Can I patent this?

EPC MembersEPC ExtensionEAPO MembersOther PCT

Can I patent this?

• Getting a patent– European Route

Can I patent this?


• Application at EPO or any designated Member State National Office

Can I patent this?



• Procedure to grant managed solely by EPO

Can I patent this?




• Upon grant, patent is “unbundled” i.e. becomes a national patent in every designated state.

Can I patent this?




• Upon grant, patent is “unbundled” i.e. becomes a national patent in every designated state.

• Further maintenance done separately at each relevant national office

Can I patent this?


• World Intellectual Property Organisation– Patent Co-operation Treaty (PCT)

– 136 Signatory States (as of 01 February 2007)

– Allows Search Report acceptable in all designated signatory states

Can I patent this?

PCT Signatory States – 136 @ 01 February 2007

Can I patent this?

World Regional Patent OfficesEPO & Extension States ARIPO African Regional Industrial Property Organisation

EAPO Eurasian Patent Office OAPI Organisation Africaine de la Propriété Intellectuelle

Other PCT States No extranational affiliation

Can I patent this?

• Getting a patent– PCT Route

Can I patent this?


• Application may be filed at IE, EP or WIPO Offices

Can I patent this?



• May designate any Member State or Region

Can I patent this?




• Must nominate Search Authority (EP, WIPO)

Can I patent this?





• PCT provides search report valid in every designated State and/or Region

Can I patent this?






• IE cannot be directly designated for PCT

Can I patent this?






• IE cannot be directly designated for PCT• Must nominate EPO; resulting EP patent may carry IE

designation End

Can I patent this?

• Getting a patent– Recap

• Three routes to Patent valid in Ireland– IE national application (Short or Full Term)

– EPO Application designating Ireland

– PCT application designating EPO Region (including IE)

Can I patent this?

• Getting a patent– IE National Procedure

Can I patent this?


• Application Specification– Title (relevant to invention)

– Description (of the invention)

– Claims (legal definition of scope of invention)

– Abstract (for search purposes)

• Application Form

• Fees…Skip claims

Can I patent this?


• Claims– Define legal scope of invention

– Description assists in interpretation of claims

Can I patent this?


• Bad Claims– “A folding ladder for accessing attic spaces.”

Can I patent this?



– “A medicament for treating acne.”

Can I patent this?




– “A method for reducing petrol consumption in a vehicle characterised in that the vehicle operates at a reduced cost to the user.”

Can I patent this?




– “A method for reducing petrol consumption in a vehicle characterised in that the vehicle operates at a reduced cost to the user.”

– “The user will immediately see the benefits of my invention.”

Can I patent this?


• Good Claims

Can I patent this?


• Good Claims– Define legal scope of invention


Can I patent this?




– Each claim must characterise an invention by its technical features

Can I patent this?




– Each claim must characterise an invention by its technical features

– Each claim must describe a complete embodiment

Can I patent this?

1. A bale wrapping apparatus comprising a wrapping table for supporting and rotating square bales, and a wrapping film dispenser, characterised in that the wrapping table comprises:

a table frame;

laterally spaced-apart rollers, with at least one belt wound to provide a flexible bale-supporting platform between the rollers;

a drive means for rotating the rollers for rotating the rollers so that they in turn rotate

the belt(s) to provide a moving platform;

a roller support means which allows each roller to move laterally, so that the belt accommodates orientation of a bale in use.

2. A bale wrapping apparatus according to claim 1, wherein the apparatus further comprises a curved bale-dispensing plate, pivotally connected to the frame, for dispensing a wrapped bale to the ground.

Can I patent this?

1. A process for treating waste material comprising;

mixing the waste material with an additive for causing an exothermic reaction in the mixture and for raising the pH of the mixture,

aerating and reducing the particle size of the mixture, and

dehydrating the mixture.

2. A process as claimed in claim 1 in which the additive for causing the exothermic reaction in the mixture and for raising the pH of the mixture is selected from a group comprising lime, quicklime, dolomitic lime, cement kiln dust and lime kiln dust.

Can I patent this?

• Getting a patent– Technical check for publication

• Eligibility

• Unity

• Classification

• Abstract

• Formal presentation

Can I patent this?

• Getting a patent– Proof of Novelty

• Search Report (Section 29)– Focus on published patent documents and NPL

• Evidence (Section 30)– EPO Search Report or Granted Specification*

– UK Search Report or Granted Specification

– DE Search Report or Granted Specification

– PCT Search Report

* Either EP originating or from 3rd Party State using EP as Search Authority

Can I patent this?

• Getting a patent– Proof of Novelty

• Search Report (Section 29)– Focus on published patent documents and NPL

• Evidence (Section 30)– EPO Search Report or Granted Specification*

– UK Search Report or Granted Specification

– DE Search Report or Granted Specification

– PCT Search Report

• Amendments (if required…)* Either EP originating or from 3rd Party State using EP as Search Authority

Can I patent this?

• Getting a patent– Examination for Grant

• Allowability of claims

• Scope

• Unity

• Reclassification

• Formal presentation

Can I patent this?

• Getting a patent– Amendments

• Pre-grant (Section 32)

• Post-grant (Section 38)

• Scope vs. original filing

– Revocations• Decisions (revocation, partial revocation, upholding)

– Infringement

– Hearings

Can I patent this?

• Getting a patent– Short Term Patents

• As Technical check for Full-term, plus

• ‘Deemed Void’

• Inventive Step

Can I patent this?

• Getting a patent– Short Term Patents

• As Technical check for Full-term, plus

• ‘Deemed Void’

• Inventive Step

– No prior requirement to establish novelty.

Can I patent this?

• Getting a patent– Supplementary Protection Certificates (SPCs)

• For Medicinal or Plant Protection products

• Compensates Patentee for gap between Patent filing and Market Authorisation

5 years extra patent protection for specific products

Can I patent this?

• In summary

Can I patent this?

• In summary

– Quid pro quo - Monopoly in return for disclosure

Can I patent this?

• In summary


– Inventions must be

• New (go beyond state of the art)

Can I patent this?

• In summary




• Inventive (non-obvious)

Can I patent this?

• In summary





• Industrially applicable (technical and useful)

Can I patent this?

• In summary





• Industrially applicable (technical and useful)

– Three routes to an Irish Patent

Can I patent this?

Questions???

Can I patent this?

• Special matters– Computer programs

– Business methods

– Biotechnology issues

Can I patent this?

• Special matters - Computer programs

Can I patent this?

• Special matters - Computer programs• Computer programs per se not patentable

Can I patent this?


• Technical character/technical effect

Can I patent this?



• What is decisive is the technical contribution of the invention

• Does the software solve a technical problem?

Can I patent this?




• Does the software solve a technical problem?

• Key decisions– Vicom T208/84 (digital image enhancement, efficient algorithm)

– IBM T935/97 (overlay of computer windows, data visibility)

– Koch & Sterzel T26/86 (X-Ray apparatus, calculation of optimum exposure parameters)

Can I patent this?

• Special matters - Business Methods• Business methods per se not patentable



• Does the invention solve a technical problem?

• Key decision– Sohei, T769/92 (Business management software, data

management)

Can I patent this?

• Special matters - EU Biotechnology directive (98/44/EC)

• Ethical considerations

Can I patent this?


• Ethical considerations “The human body, at the various stages of its formation and

development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene, shall not be patentable.”

Can I patent this?




processes for cloning human beings,

modifying the germ line genetic identity of human beings,

modifying the genetic identity of animals which is likely to cause them suffering without any substantial medical benefit to man or animal, and animals resulting from such a process.

Can I patent this?




processes for cloning human beings,

modifying the germ line genetic identity of human beings,

modifying the genetic identity of animals which is likely to cause them suffering without any substantial medical benefit to man or animal, and animals resulting from such a process.

the use of human embryos for industrial or commercial purposes.

Can I patent this?

• Getting a patent– What type?

Can I patent this?

• Getting a patent National

Can I patent this?

• Getting a patent– Full term

• 20 years• €125 Application Fee• Search Report (€361) /

Evidence of Novelty (€86)• Grant fee €64• Renewal

– 3rd year €60– 10th year €220– 20th year €468– Average €257.11

National

Can I patent this?

• Getting a patent– Full term

• 20 years• €125 Application Fee• Search Report (€361) /

Evidence of Novelty (€86)• Grant fee €64• Renewal

– 3rd year €60– 10th year €220– 20th year €468– Average €257.11

National– Short term

• 10 years• €60 Application Fee• No Evidence required• No more than 5 Claims• Grant fee €30• Renewal

– 3rd year €30

– 10th year €110

– Average €116.38

Can I patent this?

• Getting a patent European

Can I patent this?

• Getting a patent– European

• 20 years• Application €125 (+

Designation €75 per ctry)

• Search €690 / Examination €1430

• Grant €715*

• Renewal– 3rd year €380 10th year €1020

* Patent then reverts to national patent in each designated country

European

Can I patent this?

• Getting a patent– European

• 20 years• Application €125 (+

Designation €75 per ctry)

• Search €690 / Examination €1430

• Grant €715*

• Renewal– 3rd year €380 10th year €1020


European– Average cost of a

European patent €30530†

• EPO processing €4400

• Representations @ EPO €9630

• Validation €6650

• National Renewals €10900† based on 6 states/10 year term, average for 2002/2003 Source: EPO

Can I patent this?

• Getting a patent PCT

Can I patent this?

• Getting a patent– PCT

• 20 years• Transmittal €76• Basic fee €902

(Designation €10)

• Search Fee (€1550) / Preliminary Exam (€1530 + €129 handling)


PCT

Can I patent this?

• Getting a patent– PCT

• 20 years• Transmittal €76 • Basic fee €902

(Designation €10)

• Search Fee (€1550) / Preliminary Exam (€1530 + €129 handling)

* Patent then reverts to national patent in each designated country.

PCT Note: A PCT cannot be

used directly for obtaining a national patent in Ireland

PCT valid for European patent designating Ireland

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Can I patent this?

• Esp@cenet (http://ep.espacenet.com)

http://ep.espacenet.com/


Can I patent this?

• Esp@cenet (http://ep.espacenet.com)– EPO-supported on-line patent database



Can I patent this?


– Allows searching of over 30 million patent documents



Can I patent this?



– Search by• Keyword (title and/or abstract)

• Technical field

• Biographical data (applicant, doc. no., inventor, &c)



Can I patent this?



– Search by• Keyword (title and/or abstract)

• Technical field

• Biographical data (applicant, doc. no., inventor, &c)

– Can view scanned originals or read text.


Can I patent this?

• Priority

Can I patent this?

• Priority– First filing (e.g. at IE office)

Can I patent this?


– 12 months period

Can I patent this?



– Subsequent filing (e.g. at EPO) gets priority date of 1st filing

Can I patent this?



– Subsequent filing (e.g. at EPO) gets priority date of 1st filing

– Intervening applications not prior art

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Can I patent this?

Can I patent this?

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Can I patent this?

Can I patent this?

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can i patent this? the invention process and its pitfalls

Documents

originsletters patent

year monopoly

patentabilityan invention

city of florence

hoisting apparatus

marble blocks

filippo brunelleschi

city of venice