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