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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 Full Disclosure of the Invention to the Public • Patent rights for 20 years • Patents for specific territories • Process is lengthy and rigorous www.abertay.ac.uk What goes into a patent? www.abertay.ac.uk Basic Requirements for Patentability For something to be patentable, it must be: • AN INVENTION (i.e. NOT EXCLUDED SUBJECT-MATTER) • NOVEL • INVENTIVE • INDUSTRIALLY USEFUL www.abertay.ac.uk 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 www.abertay.ac.uk Per Se Caveat If Patent Claim solely comprises an excluded subjectmatter, 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 www.abertay.ac.uk 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 www.abertay.ac.uk 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 www.abertay.ac.uk 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 www.abertay.ac.uk 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 www.abertay.ac.uk 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 animals o 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 www.abertay.ac.uk 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 www.abertay.ac.uk Overview of Patent Prosecution Procedure • Formalities • Search • Publication • Substantive examination • Grant www.abertay.ac.uk 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 www.abertay.ac.uk