Things You Should Know About patents

By: Dr.Adi Pancoro

1. There is NO such thing as an international patent.

            There are "international applications" called PCT applications that need to be converted into national applications within a period of maximum 30 months in order to obtain a patent. 

1a. There is no such thing as an international patent.

The confusion and misunderstanding about "international patents" arises sometimes from the PCT process of pursuing patents. When looking at a PCT application, many people erroneously, but understandably, conclude that it is an application for a patent that will be valid in multiple countries. Indeed on the front page of a PCT application (presented below), in the upper right corner there is a heading titled "Designated states" followed by a list of two letter codes. Each of those codes stands for a country (e.g., AU, Australia; CA, Canada; CN, China, and so on). There can be as many as about 110 countries listed. However, this list does not mean that the application is a patent, or even will become a patent, in all of these countries.

Through an international treaty (Paris Convention Treaty), a group of countries agreed to not discriminate against each other by affording patent applicants in these countries a one-year period in which to file an application in one of the other countries without losing the benefit of their filing date. The advantage is that any "art" that became known after the original filing date in the home country but before the filing date in another country could not be cited against the application. Thus, for example, if you originally file an application for your invention in Canada, you could wait up to one year before filing the application in Mexico. This would give you time to see if the costs of filing in other countries is justified.

Later, a second treaty (Patent Cooperation Treaty (PCT)) established another route to delay the additional filings in other countries. In this method, an international office was set up (World Intellectual Property Office (WIPO)) to receive and process the applications. But now, the applicant has one year to file at the WIPO office and by designating member countries she preserves her rights and original filing date in those designated countries without having to go to the expense of actually filing in each country. This saves an enormous amount of money! Eventually to obtain a patent in these countries, the application does need to be filed in the national patent offices (the process is called "conversion"), pay fees, have translations done and comply with the regulations of each individual office. Depending on some procedural issues and fee payments, the applicant has either 20 months or 30 months from the original filing date (the date the application was filed in the home country) to file in each of these other countries. Given the costs, most applications are filed in a few other countries at most.

2.  Patent applications are NOT the same as granted patents.

    A patent application undergoes an examination process to see if it meets the patentability requirements of the country it is lodged in. During this process, the claims are often amended. Thus, a patent application contains claims reciting what an applicant hopes to get patent protection for, and a patent contains claims that have legal protection.

2a. Patent applications are not the same as granted patents.

    A patent application is filed with a set of claims. The patent applications with the claims are generally published 18 months after the filing date. Sometimes the claims are written much more broadly than is actually patentable. As the application is examined by a patent office and claim language negotiated, the claims may shrink or alter in scope. In contrast, the specification of a granted patent will usually be the same as when filed; new matter is not allowed to be added to the text after it is filed. Because the claims in an application are what the applicant hopes for and not what she has legal protection over, it is important to know whether you are looking at a granted patent or a patent application.

3.  Patents are examined, they are NOT peer-reviewed.

   Patent examiners assess an invention against the relevant prior art publicly available in the field of the invention to determine whether it fulfills the patentability criteria. The requirements for patentability are not the same as the criteria used for publishing research results in a scientific journal.

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3a. Patents are examined, they are NOT peer-reviewed

   Unlike publications in scientific journals, patent applications are not sent to reviewers for comments on technological aspects. Patent applications are assessed by patent examiners, who, in the major jurisdictions, have both a technological and legal background. They determine whether a filed invention meets the patentability criteria: mainly novelty and non-obviousness or inventiveness. Patent examiners utilize their technological and legal skills to search for prior art (written documents published worldwide, relevant to the filed invention). Their task is to establish whether the invention has been previously described and whether it could have been obvious to a person of ordinary skill in the field of the invention. Whether a granted patent is scientifically or technologically valid is established by the final users of the patented invention.

4.  The applicant or assignee of a patent may not be the actual holder of the patent rights.

      Patents are commercial tradeable assets and the rights can be assigned or licensed to a third party.

4. The applicant or the assignee of a patent may not be the actual holder of the patent rights

    The legal owner of a patent is designated as the "Assignee" on United States patents and as the "Applicant" on patents in the rest of the world. However, the rights of a patent holder is like a bundle of sticks, and one of these sticks is legal ownership.

These rights are tradeable. The typical form of trade is a license, in which some or all of the rights may be transferred. For example, the patent owner may license only some of the claims in a patent, all of the claims but only in a particular field of research, all of the rights but only in certain countries, or the right to make and use but not the right to sell. Other types of licenses may also be granted. Unlike the ownership of a patent, which is a matter of public record, licenses can be private. Unless the parties to a license choose to reveal the relationship, it is impossible to know about.

5.  Patents have a limited lifetime.

     A patent lasts for 20 years from the date of filing provided required maintenance fees are paid. This period is the monopoly period granted to the owner of the patent.

5a. Patents have a limited lifetime

    According to the TRIPS Agreement, a country belonging to the World Trade Organization (WTO) must grant a patent at least a 20-year term from the earliest filing date of the application. TRIPS came into effect in 1995 in the industrialized member countries, in 2000 for most of the rest of the member countries and it will enter into effect in 2005 for the least developed member countries. The 20-year term is valid as long as the maintenance fees for a patent are paid.

6.  Patents are rights with geographic boundaries.

            Patents are granted by the government of a country or jurisdiction and the rights are valid only within its territorial boundaries.

6a. Patents are rights with geographic boundaries

    A patent is awarded by the government of a country and is valid only within its territorial boundaries. To obtain a patent that is valid in a particular country, a request must be made in that country's patent office.

There are several regional patent offices, such as the European Patent Office (EPO) and the African Regional Industry Organization (ARIPO). They provide a centralized searching and examination authority for the countries that subscribe to the treaties administered by these regional offices. However, a patent is only obtained in the individual countries after registering the patent in their patent offices, paying any national fees and filing translations of the patents if necessary. This process is called conversion.

7.  Infringement of a patent is not a crime.

     The infringement of a patent is not an act committed against the state. Therefore, it is not punished with a sentence in jail. Infringement is a civil wrong, where a person's rights are violated and is up to the offended party to sue for damages or seek other legal remedies.

7a. Infringement of a patent is not a crime

    Infringement of a patent is not a crime. That is, it is not a wrongful act against the state and therefore, you do not go to jail. Infringement of someone else's patent rights is a civil wrong committed against a person or entity. It is up to the offended, in this case the owner of the patent, to seek a legal remedy for the violation of his/her rights. Enforcement of patent rights is left to the owner of the rights. Nothing may happen if the patent owner does not become aware of the infringement or if it decides not to take any action against the infringer of the patent. In the case that the owner of the rights enforce its rights, it may try to settle the matter with the infringer out of court. Alternatively, it may decide to file a suit against the infringer in a court. The remedies that a court may grant for a patent owner are an injunction (order to stop the offender from doing the wrongful act), award of damages (monetary compensation to the owner of the rights) and an account of profits (payment of the profits made from the infringement of the patent to the patent rights holder).

8.  Claims define the limits of a patented invention and the boundaries of the patent rights....

      not the titles, not the abstract, not the detailed description of the invention, not the examples and figures.

8a. Claims define the limits of the patented invention

    It is the claims that define the boundaries of the patent owner's rights. Don't fall into the trap of concluding that the title or the abstract or the general description found in the text of the patent indicates what is patented. For example, United States Patent No. 6 074 877 is titled "Process for transforming monocotyledonous plants". From the title, it sounds like these patent owners have protected a transformation process(es) for transforming all monocot plants. Examination of the claims shows, however, that only transformation of cereal plants is protected, and furthermore that the method involves wounding an embryogenic callus or treating an embryogenic callus with an enzyme that degrades cell walls prior to transferring DNA into the cells with Agrobacterium. A bit different than what the title implied.

To determine if someone is infringing a patent, that is making, using, etc., without the patent owner's permission, the allegedly infringing product is compared only to the claims. The scope of the claimed invention may not always be clear however, from reading the plain language of the claim, despite the requirement that claims must be stated definitively so that others are able to understand what is and what is not protected. In the case above, for example, several terms in the claims (e.g., "cereal plants", "embryogenic callus", and "enzyme that degrades cell walls") are unclear. Thus, claim interpretation can be difficult; a proper analysis is done by reading the claims in the context of the specification and in the context of the "prosecution history" (the back and forth negotiations of the claim language between the patent applicant and the patent office).

Claims come in two flavors: independent and dependent. An independent claim stands alone. It includes all the necessary limitations and does not depend on or include limitations from any other claim. A dependent claim refers back to and further limits another claim or claims. Moreover, a dependent claim includes all the limitations of the claim incorporated by reference.

9.  A patent does not guarantee that anyone will license the invention.

    As any tradeadable asset, a patent needs to be promoted, offered in the market and commercialized actively in order to generate an income.

9a. A patent does not guarantee licensing the invention

   A granted patent does not mean instant cash flow. The protected invention must be transformed in a marketable product in order to generate revenue and profits. There might be a long way to go before a patented product or process is ripe for sale. Depending on the capabilities of the entity owning the patent, marketing a patented invention may entail entering agreements with other institutions, which would be completely or partially in charge of the commercial exploitation. The strategy followed for the commercialization of an invention depends on the market value of the technology, the financial position of the patent owner and the human and capital resources that could be invested in the commercial venture. Among the options for commercialization are: licensing, through which some patent rights are granted to another in exchange of payment; creating a start-up company for marketing the product; undertaking joint ventures, where other parties may be the capital providers; cross-license of IP rights with other institutions; and selling or assigning all patent rights to another entity.

10.  Patent rights are exclusionary rights.

     They can be used to stop others from using, making, selling, offering to sell, and importing the protected invention if they do not have the authorization of the patent right holder.

10a. Patent rights are exclusionary rights

       The patent owner's rights are exclusionary: she may exclude others from making, using, selling, offering to sell, importing the patented invention and importing a product made by a process patented in the importing country. Each one of these acts constitutes an independent right granted to the owner of the patent. Unauthorized performance of any of these acts by a third person will amount to infringement of the patent.

Patents rights are not affirmative rights. That is, they do not confer the right to perform any of the acts listed above, they only confer the right to exclude others from doing them. A patent owner may be prevented from making, using or selling a product of a patented invention because, among other things, there might be a major patent that dominates the field or a government may refuse market approval for the patented product. www.cambiaip.org