An introduction to the current patent system

Transcription

1 An introduction to the current patent system Centro Congressi Environment Park 26 Settembre 2014 Roberto Pistolesi Dragotti & Associati Milano - Via Nino Marina, Bixio, 6 7 milano@dragotti.com Treviso Via Paris Bordone, 9 treviso@dragotti.com

2 The origins Parte Veneziana : March 19, 1474 Chadaun che fara in questa cita algun nuovo et ingegnoso artificio, non facto perauanti nel dominio nostro, reducto chel sara a perfection, sicchè il se possi usar et exercitar, sia tegnido a darlo in nota al officio di nostri Prouededori de Comun. Siano prohibido a chadaun altro in alguna terra et luogo nostro, far alcun altro artificio, ad Immagine et similitudine di quello, senza consentimento et licentia del auctor, fino ad anni X. 2

3 The patent is a contract between the inventor and the society. The inventor provides the society with a valuable technical teaching (i.e. how to solve a given technical problem) and is rewarded with a 20-year monopoly. The patent monoply, however, is not an authorization to exploit the invention (i.e. the technical teaching). It is only an authorization to prevent third parties from exploiting the invention. 3

4 Practical example The invention is that glucose + aspartame is better than glucose or aspartame Company A gets a patent on glucose + aspartame But company B already has a patent on glucose A cannot use glucose + aspartame until B s patent on glucose expires But B cannot use glucose + aspartame until A s patent expires Importance of FTO opinion 4

5 The patent is a national monopoly and is subjected to national laws (although several international treaties exist) If you want to have a patent monoply in China, USA, Germany, France and Italy, you have to file patent applications in those states If you file in China, USA, Germany and Italy only, you cannot get a monopoly in France at a later stage 18 months from 1 st filing Priority claim 5

6 Renewal fees The standard term of a patent is 20 years as from the date of filing. Renewal fees must be paid to maintain a granted patent in force. But may also due for pending applications (EPO). Normally due annually. In the USA due 3½, 7½ and 11½ years after grant. The amount of the fees increases with the age of the patent 6

7 European Patent Convention The EPC is a multilateral treaty providing an autonomous legal system according to which European patents are granted. The EPC has established a single procedure for the grant of patents on the basis of a single application and created a uniform body of substantive patent law designed to provide easier, cheaper and stronger protection for inventions in the contracting states. 7

8 European Patent Convention The contracting states are: Albania, Austria, Belgium, Bulgaria, Cyprus, Croatia, Czech Republic, Denmark, Estonia, Finland, former Yugoslav Republic of Macedonia, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, Netherlands, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and United Kingdom (38). 8

9 European Patent Convention: Art. 64 In each contracting state for which it is granted, a European patent gives its proprietor the same rights as would be conferred by a national patent granted in that state. If its subject-matter is a process, protection is extended to products directly obtained by that process. Any infringement of a European patent is dealt with by national law. 9

10 London Agreement In France, Germany, Luxembourg, Monaco, Switzerland/Liechtenstein and the United Kingdom, no translation of the specification of the European patent needs to be supplied. The European patent automatically confers on its proprietor from the date the mention of its grant is published in the European Patent Bulletin, the same rights as would be conferred by a national patent granted in that state. 10

11 London Agreement Austria, Belgium, Bulgaria, Cyprus, the Czech Republic, Estonia, Finland, Greece, Hungary, Ireland, Italy, Malta, Norway, Poland, Portugal, Romania, Slovakia, Spain and Turkey require a translation of the complete European patent specification if the European patent has not been granted in one of their official languages. 11

12 London Agreement Latvia, Lithuania and Slovenia require a translation of the claims only. Croatia, Denmark, Iceland, the Netherlands and Sweden also require a translation of the claims only unless the European patent has been granted in English, or - in case the patent has been granted in French or German - if an English translation is supplied. 12

13 Requirements Art. 78 EPC A European patent application shall contain: (a) a request for the grant of a European patent; (b) a description of the invention; (c) one or more claims; (d) any drawings referred to in the description or the claims; (e) an abstract. 13

14 Publication Art. 93 EPC 1) The European Patent Office shall publish the European patent application as soon as possible (a) after the expiry of a period of eighteen months from the date of filing or, if priority has been claimed, from the date of priority, or (b) at the request of the applicant, before the expiry of that period. 14

15 Provisional protection - Art. 67(1) EPC A European patent application shall, from the date of its publication, provisionally confer upon the applicant the protection provided for by Article 64, in the Contracting States designated in the application. 15

16 Provisional protection - Art. 69(2) EPC For the period up to grant of the European patent, the extent of the protection conferred by the European patent application shall be determined by the claims contained in the application as published. However, the European patent as granted or as amended in opposition, limitation or revocation proceedings shall determine retroactively the protection conferred by the application, in so far as such protection is not thereby extended. 16

17 Sufficiency of disclosure Art. 83 EPC The European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. Filing or not filing? Regime of secrecy Secrecy may be lost Competitors may arrive at the same invention and get a patent on it Prior user rights 17

18 Clarity Art. 84 EPC The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description. Attention is required whenever the word about or similar terms such as approximately or substantially are used. Such a word may be applied to a particular value (e.g. about 200C), to a range (e.g. about x to about y) or to a structural unit of an apparatus (e.g. a plate with a substantially circular circumference). Italy? 18

19 Types of claims There are only two basic kinds of claim: claims to a physical entity (product, apparatus) and claims to an activity (process, use). The first basic kind of claim includes a substance or composition (e.g. chemical compound or a mixture of compounds) as well as any physical entity (e.g. object, article, apparatus, machine) which is produced by a person's technical skill. 19

20 Product-by-process claims A claim defining a product in terms of a process is to be construed as a claim to the product as such. The claim may for instance take the form "Product X obtainable by process Y". These claims are normally allowed when the product cannot be defined in a better way. 20

21 Novelty Art. 54 EPC (1) An invention shall be considered to be new if it does not form part of the state of the art. (2) The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application. 21

22 Novelty Art. 54 EPC (3) Additionally, the content of European patent applications as filed, the dates of filing of which are prior to the date referred to in paragraph 2 and which were published on or after that date, shall be considered as comprised in the state of the art. 22

23 Inventive step Art. 56 EPC An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents within the meaning of Art. 54(3), these documents shall not be considered in deciding whether there has been an inventive step. 23

24 Paris Convention On the basis of a 1 st application filed in a contracting State, the applicant may, within 12 months, apply for protection in any of the other contracting States; these later applications will be regarded as if they had been filed on the same day as the 1 st application. These later applications will have priority over applications which may have been filed during said period of time by other persons for the same invention. 24

25 Procedure before the EPO The EP grant procedure is an examination procedure beginning with a formalities examination and a mandatory search. The first stage ends with the publication of the European patent application and the search report. At the applicant's request this is followed by the second stage, substantive examination. After the patent has been granted, there may be a further procedure in the form of opposition proceedings or, upon request of the patentee, limitation or revocation proceedings. 25

26 Procedure before the EPO The first stage of the procedure comprises an examination on filing, formalities examination, preparation of the European search report and a preliminary opinion on patentability, and publication of the application and the search report. Responsibility for this stage rests with the Receiving Section and a search division. 26

27 Procedure before the EPO The second stage comprises substantive examination and grant. Examining divisions are made up of three technically qualified examiners, who may if necessary be joined by a legally qualified examiner. Until a decision has to be taken on the application, its examination is as a rule entrusted to one of the technically qualified examiners. This examiner is responsible for issuing the requisite communications and for discussing the application with the applicant in writing, in person or on the telephone. 27

28 Procedure before the EPO If oral proceedings are requested by the applicant or arranged at the EPO s initiative, they are held before the full examining division. Personal or phone interview with the examiner may also be requested. The final decision on the grant of the patent or refusal of the application is also a matter for the full examining division. 28

29 Amendments Art. 123 EPC (2) The European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed. (3) The European patent may not be amended in such a way as to extend the protection it confers. 29

30 Duty to disclose: EPO An applicant claiming priority of a previous application has to file a copy of the results of any search carried out by the authority with which the previous application was filed together with the European patent application. Where multiple priorities are claimed, the applicant has to file copies of the search results drawn up in respect of all previous applications concerned. If not yet available, to be filed asap (or declaration). Otherwise application may be rejected. 30

31 Duty to disclose: USA Failure of a person who is involved in the preparation or prosecution of a US patent application to disclose any information which is material to the patentability of a claim can result in the patent being held unenforceable for inequitable conduct. Material information: prior art experimental test 31

32 PCT (Patent Cooperation Treaty) The PCT makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing an "international" patent application. Such an application may be filed by anyone who is a national or resident of a Contracting State. It may generally be filed with the national patent office of the Contracting State of which the applicant is a national or resident or with the WIPO in Geneva. Subjected to search report and written opinion. IPER may be requested. 32

33 PCT National phases to be filed within 30/31 months after the filing/priority date. The applicant has up to 18/19 months more than he has in a procedure outside the PCT to reflect on the desirability of seeking protection in foreign countries, to appoint local patent agents, to prepare the necessary translations and to pay the national fees. 33

34 Enforcement of patent rights Patents are important assets of a company and are therefore valuable per se, even if they are not actually enforced against someone. However, the value of a patent portfolio also depends on the possibility of its actual and successful enforcement. The claims of a patent must be valid and clear: that a patent has been granted does not mean that it is valid and enforceable. 34

35 The validity of a patent can always be challenged. This can normally be done before the competent national courts. USA/Germany Under certain circumstances, it can also be done before the national or regional patent offices: EPO: opposition procedure (within 9 months from the grant of the patent) USPTO: reexamination (at any time) 35

36 Infringement Literal Under the doctrine of equivalents whenever an accused product or process falls outside the literal language of the claims but is equivalent to and differs only unsubstantially from the claimed invention; infringement under the DoE can be found when the accused product performs substantially the same function in substantially the same way to obtain substantially the same result; prosecution estoppel doctrine. 36

37 Actions on the merit Stopping the infringement Collecting damages punitive damages Importance of FTO Restraining order penalty Seizure or destruction of infringing goods Apportionment of litigation costs Publication 37

38 Preliminary injunctions Widely used in patent litigations also as a remedy to their length Prerequisites: irreparable damage (periculum in mora); case favourable to the petitioner (fumus boni iuris). judicial description (descrizione) seizure cease and desist injunction (inibitoria) 38

39 Thank you! 39