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Andris Taurins

on 19 January 2016

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Transcript of PATENTS

A patent is a limited monopoly for 20 years granted in return for the disclosure of technical information
rights compared to other IP domains are more extensive - cover most commercial uses
strict requirements for registration
National patent offices
European Patent Office (grants bundle of national patents)
mixture of national, European and international elements
European Patent Convention
Patent Cooperation Treaty
Convention of Biological Diversity
initially patents were crude, often documents 2 sentences long
now complicated, sophisticated and lengthy
different ways the patents are described and drafted
contents of the patent


Patents are only granted after formal procedures
National route
European route
Lecture 3
Inventive Step
Infringement of patents
Andris Tauriņš
Some form of patent rights was recognized in Ancient Greece
The word patent comes from the Latin 'litterae patentes' -an open letter.
Such letters were used by medieval monarchs to confer rights and privileges. With a royal seal, the letters served as proof of those rights, for all to see
the first informal system was developed in Renaissance Italy
The system was introduced into the rest of Europe by émigré Venetian glass-blowers to protect their skills against those of local workers
The first recorded patent of invention was granted to John of Utynam. In 1449, he was awarded a 20-year monopoly for a glass-making process previously unknown in England
In return for his monopoly, John of Utynam was required to teach his process to native Englishmen
Modern patent law since 19th century
shift from Crown to bureaucrats
criticism about the system "..unnecessarily complicated, technical and obscure.."
benefit to public of limited practical value
unjustified inhibitions on the free trade
Impact on UK Patent law, e.g. nature of disclosed information
Bilateral agreements in the early 19th century
1883 Paris convention - "national treatment"
Developed over time
natural rights of inventors to products of mental labor
Justice demands reward for inventor's contribution
The public interest
corresponding benefit in return for the harm caused by the grant of a patent
disclosed information that might otherwise remain secret
substantive and valuable database of technical and scientific information
EPO: "..invention could readily put into practice"
Patents provide an incentive for the production of new inventions
To encourage investors to fund research and development
protects from reverse-engineering (e.g disassembling a mechanical device) when no other protection exists
Undesirable side effects - ethical debates whether patents should be granted for genetically modified organisms such as animals
Effect on food security, access to medicine etc.
EPC signed in Munich in 1973
Replaced by EPC 2000, effect as of 2007
Intergovernmental treaty, distinct from the EU, 38 MS
Granting European patents
single application to EPO, grant a bundle of national patents
matters of infringement, enforcement, revocation, renewal, litigation for national laws
risk of different interpretation by MS
invalidation actions subject to EPO
EPC 2000 (II)
The EPC provides that patents should be granted in all fields of technology
however, computer programs left on the list of non-patentable inventions
central procedure through EPO, no need for involvement for national offices
in case of invalidity of patent, quick amendments possible
translation- key issue within EPO (23 lang.)
MS may require to translate patent into the national language
transl. costs ca 3800 EUR per patent
London agreement 2008 solves partially
E.g. Patents act 1977 of UK
largely based on EPC
Facilitated entry of UK into the EPC
EPO has occasionally referred to decisions national of offices to maintain uniformity
Patents act 2004 of the UK mirror changes of the EPC 2000
matters of infringement, enforcement, revocation, renewal, litigation for national laws
Adopted in in 1975
A single Community (EU) patent by one central procedure and be binding in all MS
Has never come into force
Superseded by recent EU legislative instruments establishing a unitary European patent
Impact of EU in developing patent law
Supplementary protection certificate
extends patent protection up to 5 years, if the owner cannot take full advantage for 20 years
due to delays in regulatory approval
Biotechnological Directive
adopted in 1998
concerns inventions of biological materials
EU Unitary Patent
A unified and centralized European patent system
EU Regulation creating a unitary European patent (2012)
EU Regulation concerning language requirements of the unitary patent (2012)
the Agreement on a Unified Patent Court (will enter into force as soon as 13 states, including France, Germany and the United Kingdom, have ratified it.)
EU Unitary Patent
Currently 2 classical ways to obtain patent in Europe:
national patents in national offices; or
application to EPO for a "bundle" of national patents
Costly and time-consuming
Unitary patent aimed to solve these problems
Uniform protection in 25 MS
Administered and granted by the EPO
Transformation of European patent into a unitary patent
national patents, European patents an unitary patents will coexist
EU Unitary Patent (II)
Aim to reduce costs of translations
official languages English, French and German
However, expected translation service "Patent Translate" to be introduced in order to provide information function of the patent
UK government has estimated that up to 20000 pounds per patent would be saved due to translation and validation costs
Unified patent court
Aim to reduce costs of litigation, unify patent law, and increase certainty
Still ratification of the UPC Agreement waited from several MS
Located in three cities
London (responsible for chemical, pharmaceuticals, life science)
Munich (re mechanical engineering)
Paris (all other patents)
Court of appeal in Luxembourg
Patent Cooperation Treaty 1970
provides fro a system of international application and preliminary examination procedure
148 MS
centralized procedure through WIPO
Little impact on European patent law
However, impact on developing countries in relation to the standards of protection
Criticism re access of life-saving drugs
solution found by WTO to allow countries to manufacture patented medicines under compulsory license for export to developing countries
Criticism by African countries re patenting of life forms (incl. plants)
that farmers should have right to save seeds
WIPO Patent Law Treaty (2000)

aims to simplify procedure for obtaining patent
Legal document that confers a 20 year monopoly on the patentee
national patents or European patents (valid for all MS)
classifying by subject matter
e.g. biotechnological patents
chemical patents
Normally undertaken by patent agents
very difficult to explain particular forms of technology
Patents are at once technical, commercial and legal documents
detailed rules on drafting
temptation to provide minimum amount of information
important how stringently the patent office applies disclosure requirement
Patents are made up of four key parts
an abstract
a description of the invention
one or more claims
any drawings referred to in the description
Brief summary (around 150 words) of the most important technical features of the invention
reveals the technical problem that the invention attempts to resolve
similar to technical or scientific papers: explain what has been created, the problems that the inventions solves, why it is important, how it differs from the inventions created before
should be clear and complete enough for it to be performed by a person skilled in art
The primary function is to set out the scope of the legal protection conferred by the patent
usually a number of claims
general claims are followed by narrower claims
a notable feature of most claims - they are difficult to understand, at least to the non-experts (e.g. "non-human mammals" instead of mice)
The drawings may be used to interpret the claims
Preliminary issues
deciding to patent
what benefits?
exclusive right to make, use, and sell the patented invention for 20 years
p. can be included on balance sheets
symbolic capital of an inventor
the image of goods
Associated costs
Patent agent fees
the administrative charges (e.g. yearly fee)
translation costs (my go up to 32k EUR at EPO)
time and effort
risks of making patents available to public
can benefits of patenting be reached by other means (e.g. trade secrets)
patenting practices vary from industry to industry (copying expenses weighed , e.g. in aviation sector)
Patent agents
common to involve patent agents
P. agents have usually knowledge of the law, the patent administration process, and a particular branch of science
drafting skills
Choice of routes
national, EPO, PCT, unitary patent?
most importantly -
where to protect
commercial and strategic considerations (less costs in national offices)
full examination in EPO, but not in some national offices (NL, BE etc.)
EPC - central attack
Patent application features
Requirement of registration
info available to public
establish priority
granted to the first person applying
formalities of filing, subject matter, novelty, non-obviousness, sufficiency
Amendments possible
Procedure to grant
Who can apply?
no restrictions, i.e. "national treatment"
Filing application in national offices for national patents
or with EPO for European p.
official language
instead of full application, "early filing" option (12 months)
for experiments, funding etc.
Priority date - the criteria of patentability are assessed
preliminary examination and search
formal requirements
within 18 months from filing
observations of third parties
Substantive examination
to ensure validity of patent
novelty, inventive step, industrial applicability
claims are concise
Grant of the patent
if the all requirements are met, the patent will be granted
revocation (in courts) of patent on limited grounds
e.g. invention is not patentable
opposition at the EPO on limited grounds
e.g. the patent does not disclose invention clearly
also after the patent has been granted
invention must
consist of patentable subject matter
be new
involve inventive step
Patentable subject matter
industrial application (A52 EPC)
methods of medical treatment excluded
Non-inventions (A52 (3):
discoveries, scientific theories and mathematical methods;
aesthetic creations;
schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
presentations of information.
Patentable subject matter
variety of animal or plant or biological process excluded
immoral inventions or inventions contrary to public policy
e.g. immoral biological inventions (such as human cloning)
Industrial application
patent should not be purely abstract
to be used in any kind of industry
useful purpose or practical application
e.g. human gene sequencing without any identification of function

invention must be new
it does not form a part of "state of art"
the invention must be
different from previous discoveries (concerns technical information)
in UK and EPO the concept of "absolute novelty" - relates to all information, worldwide information
after the technical features of an invention are identified, then the nature of the information disclosed by prior art must be determined
"state of art" defined very broadly - includes all matter that at the priority date was available to the public by written or oral description, by use or in any other way
no geographical limits
The state of art
no restrictions on the mode of disclosure
patents, journal articles, exhibitions, sales, oral communications
no minimum requirement on how widely information must be disclosed
information obtained unlawfully (confidential i.) is excluded from the state of art
What information is disclosed by the prior art?
info is restricted to the information that a person skilled in the art is able to derive from the prior art
documents should be read in the light as if they were being read at the date of their publication (not later, e.g. on the priority date or the litigation etc)
Prior art
Is the invention novel?
where the prior art and the invention are identical/matches, the invention is not new
Some useful inventions
No Smoking Sign Ashtray
Patent# US D500166
Anti-eating face mask
(US 4344424)
Bird diaper (US 5934226)
Cheese-Filter Cigarette (US 3234948)
According to its inventor, "current" cigarette filters (circa 1966) don't filter enough tar and nicotine from tobacco smoke, so he "discovered" a new one: cheese! He insists it makes a "very efficient tobacco filter."
Banana Protection Device (US 6612440)
Sound Muffler for Covering the Mouth (US 4834212)
a device into which a person may yell or scream without disturbing others, allowing him to vent built-up anger and frustration.
Dog Ear Protector (US 4233942)
a device for protecting the ears of animals, especially long-haired dogs, from becoming soiled by the animal's food while the animal is eating.
Solar Plane
An iron that lifts and lowers automatically over fabric. Chosen as one of Time Magazine's Best Inventions of 2006.
Patent trolls
companies that don’t make products and whose function is to buy up patents to assert against others
Often PT use low quality patents to extort settlements from small companies
The legal fees to defend against such actions can be devastating
Patent wars
Breathable Shoes: Branding Success through Patenting
Mario Moretti Polegato, chairman and founder of GEOX S.P.A.,In 1989, during a business trip to Nevada to promote his family's wine business at a trade fair, he decided to take a walk
Bothered by his overheated feet,
he used a hunting knife for puncturing several holes in the soles of his sneakers to let air through.
He had just discovered a simple and effective way to let excess heat out of his shoes.
After extensive experimenting and research on footwear construction, he discovered how to apply a membrane that is both waterproof and breathable at the same time: it has millions of small "canals", or micro pores, smaller than drops of water, so that water cannot get through, but vapor can
Mr. Polegato's technology consists of
three different components
: a
perforated inferior component
called the outsole, a
superior perforated component
called the mid-sole and a third component (the “
”), which is positioned between the outsole and the mid-sole, and that is permeable to vapor and waterproof. The combination of the membrane with holes on the outsole and mid-sole allows vapor to move out while preventing water from entering. As soon as the rubber-sole technology was in place, Mr. Polegato patented his invention in several countries. Later on, a similar solution for leather soles was also patented.
Mr. Polegato initially intended to sell the patented technology, but due to lack of interest from any of the world's leading shoe manufacturers, in 1995 he decided to enter the shoe trade himself, with a bank loan and a workforce of five
Trademarks and Branding
Mr. Polegato chose the “GEOX” name to identify his products and registered the trademark internationally. The GEOX™ brand name is a combination of the Greek word "geo" (the earth) and "x", symbolizing technology. GEOX products unify innovation with comfort and a style in line with the latest fashion trends.
Research and Development
Mr. Polegato's fast-growing company soon extended the product range and kept investing in research and development (R&D), leading to the discovery of new technologies. In 1999, GEOX patented an
idea to apply their breathable and impermeable technology to garments such as jackets, anoraks, and sports jackets.
In 2008, following many years of research in its corporate laboratories and some sales from 2005 on, GEOX launched worldwide a new line of sports footwear
Business Results
between 2000 and 2003, the group expanded internationally using a balanced mix of multi-brand stores (approximately 10,000) and single-brand stores (1000+ GEOX shops).
Since December 2004, GEOX has been listed on the Milan Stock Market exchange.
Throughout his career, Mr. Polegato has been awarded many prizes in recognition of his innovative and successful business.
R&D: The Key to Past and Future Success
The most important success factor of the GEOX group is its constant
focus on product innovation protected by patented technology
, coupled with a strong awareness of the GEOX brand.
Ever since its inception, GEOX has maintained a company policy aiming to enhance technological innovation, resulting in more than
50 different national and international patents
originated by the company to date, covering materials, products, processes, equipment and machinery
the company's constant stream of patented inventions and innovations ensures that competitors would be unable to simply copy the product after the expiration of the original patent.
Mario Moretti Polegato "It's time to invest in ideas. An idea is worth more than a factory.”
the invention involves an inventive step if it is not obvious to a person skilled in art
examined by patent offices or courts
a key element in patent law
a very difficult task to draw the line between obvious and non-obvious
in contrast to the novelty examination, the inventive-step ensures the difference of a quality
the philosophy -
the public should should not be prevented from doing anything which was merely an obvious extension of what was already known at the priority date
PLG Reasearch v. Ardon
Inventive step
When invention is obvious?
"problem-solution" approach adopted by EPO
IS is a step from the technical problem to it solution
whether the solution to the problem have been obvious to the person skilled in the art
the solution must have been not obvious at the priority date
another approach the UK
identification of an inventive concept
whether the differences that exist between the prior art and the invention
whether, viewed without knowledge of the invention, those differences constitute obvious steps to the person skilled in the art
Consolidating the approaches
Irrespective of the differences between the UK and the EPO approach the common questions arise:
who is the person skilled in the art?
what is the invention to be examined?
is the invention obvious?

Person skilled in the art?
A person posses the attributes, skills, background knowledge, and qualifications relevant to the field in which he works
qualification depends on an invention in question
e.g. Regarding SIM cards, EPO has said that the person skilled in the art is an expert in technical field, more specifically he is trained at a computer implementation of business, skilled in data processing, and not merely as a businessman or accountant.
State of the art
in examination of obviousness the persons skilled in the art has regard to any matter that forms part of the state of the art at the priority date of the invention
the state of the art is made up of everything that is made available to the public before the date of filing
the potentially broad nature of the state of the art is restricted by the fact the skilled person is expected to be aware of the information available in their own or related fields
What is the invention?
the court must identify the inventive concept of the patent
to identify the invention
the description of the patent must disclose the problem and solution
Is the invention obvious?
once the person skilled in the art and the invention has been identified , then it is necessary to examine if the invention is obvious
a problematic question, since complex and novel technologies involved
e.g. in 1980's the nature of molecular biology was undeveloped field, so easy to find the inventiveness
however, it is not impossible for an expert to know the progress in the field
the courts will usually utilize expert opinions
Is the invention obvious?
qualitative or factual nature of the test means that it is not possible to have a precise formula of the obviousness
only general guidance possible
one must show that the way in which the choice is exercised is technically creative
the distinction between routine skills and inventive skills
i.e. routine skills (e.g. in laboratory)- logically follow from the prior art
invention is obvious if the skilled person
take the route rather than
Sometimes commercial success can be taken into account, but with caution
Complex area because of evidential nature
currently a matter for national courts, which will change with the Unified Patent Court
Depends on a national law
Types of infringement
Scope of protection
Types of infringement
The activity must take place
without permission
of the patent owner, in the territory of
a particular country
and during the the
of the patent
direct and indirect (e.g. facilitates) infringement
Patent of a product gives
rights to make, dispose of, offer, use, import etc.
intention to infringe is not relevant, so liability is absolute
The right to make a product
most important right
- to make a product
does not prohibit to repair
but does not allow to make the product anew
e.g. the Bulk container case (Schutz)
Scutz case
Patent existed for the large plastic bottle and the metal cage
the novel and inventive part - the particular way how the cage was made
secondary organizations involved which replace the old bottles because of toxic liquids, repair them
instead of Schutz bottles, Werit's bottles were used
no infringement because: the bottle was not the main component/ the bottle had shorter life expectancy
Patents for a process
In the UK, the right is infringed if one can show that the defendant
or should have known that the unauthorized use of a patent is infringement (may differ in other countries)
the patent protects the process and the products flowing from the process
e.g. a patent for a method of manufacturing compact discs. Importation of such discs not infringement because all the steps of production were not performed
Indirect infringement
where a person contributes to, but not directly take part in, the infringement
e.g. patent for a glue consisting of chemicals A and B; Supplier of the either chemicals considered to be the indirect infringer
the patented invention should be compared with the alleged infringing process or device
problems can arise if minor details differ
claims of the patent to be taken into account, interpreted by the description or drawings
claims might be straightforward for technical devices, but more problematic for chemical or biological inventions
Some countries tend to interpret claims strictly but some, e.g., Germany, use the claims as the guides for determining the scope of protection
however, the EPC 2000 requires that the claims should not be read literally and not as a mere guide, but in between these extremes
the defendant can show that his activity is exempted from liability by one of the defenses
exceptions balance the interests of patentees against the interests of other groups such as competitors, previous users, non-profit bodies, research establishment
the unitary patent may change the defenses
Private non-commercial use
private non-commercial uses do not pose much a threat to the patent monopoly
but limited to the person's own use
Experimental uses
experiments relating to the patented subject matter
e.g. uses of the medicines in studies, tests or trials
Defenses for biotechnological inventions
See Biotechnology directive
e.g. specific exceptions to farmers provided such as the farmer can save seeds from one year's crop to sow crops in the following year
Other defenses
making a prescription medicine in a pharmacy
patented products used on vehicles which are temporarily entered in the country
"Vanna Vannā"
Patent for a process of repairing old buthtubs
new plastic tubs installed into the old rusty metal tubs
Not infringement because it turned out that the invention might not be novel
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