Frequently Asked Questions About Patents
What is a patent?
A patent is a property right made by a government that grants the creator of an invention the sole right to make, use, and sell that invention for a set period of time. In other words, this right gives the inventor the opportunity to “exclude others from making, using or selling the invention” for a set term, usually of 20 years.
What is the rationale of a patent system?
The rationale that has been traditionally argued to justify patents is the gains of society through the public disclosure of the invention and the further advancements that may be made on the technology. Awarding patents makes the details of an invention available publicly for further improvement by other inventors and also free for exploitation by anyone after the patent has expires. If inventors did not have the legal protection of their ideas, it is argued that, they would prefer to keep their inventions secret. However, over the past 15 years, there has been an explosion in criticism of the patent system. Many critics consider them an excessive privilege and perceive problems with the social costs associated with the patent system. Some of these critics intends to reform patent systems while other critics lobby for the abolishment of the patent systems as whole. These considerations as well as the political and ethical dimension of patents are a continuous debate around the world.
Is there a “worldwide” patent?
There is no international patent. International treaties and organisations play an important role in harmonising the intellectual property rights regimes. These are set to make it easier to seek protection to multiple countries and provide a uniform, minimal set of laws and standards that apply to all subscribing countries. For example, the Patent Cooperation Treaty, PCT, is an important tool for facilitating the application process for the filing of patents in member countries. It also facilitates the joint technical examination of applications.
What can be patented?
What can and cannot be patented is a very sensitive issue that varies by country. What can be patentable in one culture might not be patentable in another. However, in most countries patent law specifies the general field (subject matter) that can be patented and agrees that patents should be available for any inventions, whether products or processes, in all fields of technology. Among countries, there is a better consensus on the conditions under which a patent may be obtained (new, non-obvious-and useful).
The conditions under which a patent may be obtained are:
New - The invention must be novel or a new idea. No patent law allows the protection of what is already known. However, novelty is defined differently across jurisdictions. A narrow definition of novelty, takes account of what is known only in their particular country (”national novelty”). This national novelty approach in some cases is combined to include printed publications everywhere. Broader definitions of novelty, like the European Patent Convention, take into account everything known whether in print, orally or by use. Novelty also involves a time frame. In some countries a grace period, usually 6 or 12 months, exists to allow publication of the inventions. The application of the patent can still be considered novel despite a publication prior to filing date, provided that the filing is made during the grace period. To better establish novelty, it is important for inventors to describe how their inventions differ from the existing state of the art.
Non-obviousness or inventive step - The terms non-obviousness and inventive step, used in different jurisdictions, are synonymous. The invention must not be a development
that would be obvious to someone working in the field. A description of the invention must be sufficiently complete so that a peer (”another person with ordinary skill in the art”) can make and use the invention without further experimentation. The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be not obvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitutions of one material for another, or changes in size, are not patentable.
Useful or capable of industrial application - The terms useful and capable of industrial application, used in different jurisdictions, are synonymous. The invention must have a useful effect or a purpose. A patent cannot be obtained upon only on ideas or suggestion of ideas. To be patentable, the idea must be such that it can be reduced to practice. In most countries, there is no requirement that the inventor has to build a prototype in order to obtain a patent. Patent offices usually don’t test the invention but could reject a patent application if this condition is not met. An example of an inoperative device would be a time traveler’s machine. Some have argued that countries are free to increase the standards of utility and could require that a patent application express a social utility. This would be very ambiguous since some innovations may be useful for some parts of society and negative to others.
What types of patents are there?
In general, laws provide granting patents in following categories:
Utility patents are granted for any new process, method, machine, manufacture, or compositions of matter.
Design patents are granted for new, original and ornamental design for an article of manufacture. The appearance of the article is protected.
Petty patents or Utility models are granted in some jurisdictions (Australia called them Innovation Patents) to new meaningful changes or improvements from earlier patents. It is a right designed to protect improvements of inventions that do not meet the inventive step required for regular patents. The scope and duration of the protection is between 4 to 10 years depending on the country, compared with up to 20 years for a regular patent.
Plant patents - Some patent laws, like the USA and UK, provides for granting plant patents which covers distinct and new varieties of plants that have been developed and are asexually reproduced.
Who is an inventor - Is every researcher an inventor?
Regardless of the academic tradition of giving credit to all research contributors in scholarly publications, determining who is an inventor on a patent is not a choice made among scientists participating on a research. It is a legal decision that varies country by country. The improper identification of inventors or incorrect inventorship may, however, invalidate a patent.
In most countries, both natural persons and corporate entities may apply for a patent, independently from the condition of inventor. The entity then becomes the owner of the patent rights, when and if it is granted. However, it is nearly always required that the inventor be named and an indication be given on the public record as to how the owner acquired their rights to the invention.
In some countries like the United States and Canada, however, a corporate entity might be the owner of a patent but cannot be deem as an inventor, this is only a privilege for the natural person. Not even the employer or the person who pays for the development of the idea, can be named as inventor. In these countries, only those individuals who conceive an idea or participate in conceiving an inventive idea can be named as inventor. The idea must be such that it can be reduced to practice or constructed without further experimentation.
If two or more persons work together to make an invention, and each had a share in the ideas forming the invention, they are joint inventors. Those who have provided contributions like lab technicians or students or had only followed instructions in making an invention are not consider inventors in most patent laws.
What is a research exemption? - Is there a research exemption?
There is much debate on the research exemption in the patent systems of several countries. Academic institutions have long been exempted from patent claims for their research and education purposes based on the assumption that such research had no commercial intent. In several countries such research exemptions are specifically included in the law. In others such as the USA, the research exemption has evolved by court rulings, limiting its scope when academic institutions act with profit interest.
Either way, it is important to clear that the exemption is, as a court described it: “merely for [scientific] experiments, or for the purpose of ascertaining the sufficiency of the machine to produce its described effects”. In other words, research on the invention not with the invention.
Why be concerned with other people’s patents?
When taking a particular action like testing or commercialising (manufacturing, selling or importing) a product, you need to ensure that you are not copying a product or process covered by another’s patent. Otherwise you will be infringing others patent.
Why conduct patent searches?
Beyond avoiding infringing someone else’s patent, you might want to conduct patent searches for different reasons. Patent information can help you avoid wasting time and money duplicating work done elsewhere. Since IP rights are specific to a particular jurisdiction, there might be relevant technologies available for licensing or in the public domain because there where not protected in the country you are operating/ want to operate or because the patent protection has expired. Patent information can also help you keep an eye on your competitor’s research activities and is a huge source of technological and commercial intelligence and innovation trends.
What is defensive publishing?
Defensive publishing is a mechanism for maintaining intellectual property in the public domain since the publication makes a description of the innovation available for anyone to use, the innovation can no longer be called new and the requirement for novelty in a patent application is no longer met.
What is Freedom to Operate (FTO)?
Freedom to operate is a professional opinion rendered by experts in the field of intellectual property (not only related to patents) as whether or not you are infringing others rights by engaging in a particular action (like testing or commercialising a product) in a particular country or region where you want to operate.
A freedom to operate opinion related to patents usually includes the findings on patent searches in relevant jurisdictions and their expiration dates. Costs for freedom to operate opinions vary considerably, depend on the technical difficulty of the searches, and are outdated relatively fast as intellectual property landscape changes all the time.
If the searches show there are valid intellectual property rights of others that would be infringed by the action you want to take, you have to clear your situation by negotiating a licence with the owner of the IP rights.
