Patents

Purdue University is well-known as one of the leading research institutions on a global basis. As a matter of fact, according to a report released by the National Academy of Inventors (NAI) and the Intellectual Property Owners Association (IPO), it was ranked -through Purdue Research Foundation- as 12th in the world among universities granted U.S. utility patents in 2016, with 105 patents granted just for the aforementioned year; four more patents than the year before, and three positions ahead on the list.

In general terms, inventions are ordinarily produced through the hard work of an entire group of researchers, who must work harder every time in order to create innovative processes, machines, or compositions of matter. All of this effort can be protected through Intellectual Property Rights, and particularly, through Patent Law.

A Patent is an Intangible Asset, which means it is not physical in nature. The right conferred by the patent grant is, in the language of the United States Code, and of the grant itself, “the right to exclude others from making, using, offering for sale or selling the invention in the (country in which the patent is granted), or importing the invention into the (same country)”, and this protection is particularly relevant for inventors.

As you may see, the grant of a Patent is a complex process which requires both of technical and legal skills. Inventors and researchers, of course, are in charge of the technical part.

However, the grant process and the application procedure may be affected with actions that people are not even aware of. Also, a previous knowledge about basic legal issues might solve what can eventually be a big problem before it even starts, as you will eventually see.

Those are the main facts that inspire this project. Let’s start then!

Application to a Patent:

Nonprovisional application for a Patent:

It must be submitted in English, or be accompanied by a translation in English with a statement that the translation is accurate. Additionally, the corresponding fee must be paid.

The application shall be written, and it must include:

• The Utility Patent Application Transmittal Form or Transmittal Letter
• Prescribed filing, search and examination fees
• The Application Data Sheet
• A specification, which includes
  • A description: an explanation of the invention along with the process of making and using the invention in full, clear, concise and exact terms. Additionally, this section should distinguish the invention from other inventions and from what is old; and describe completely the process, machine, manufacture, composition of matter or improvement invented.
  • One or more claims: the claims must point out and claim the subject matter which the applicant regards as his invention.

The specification is a written description of the invention and of the manner and process of making and using the invention that concludes with the claims to the invention.

The specification must be in clear, full, concise and exact terms to enable any person skilled in the art or science to which the invention pertains to make and use it.

• Drawing/s (when necessary): a drawing shall be furnished if it is necessary for the understanding of the subject matter sought to be patented. If the nature of such subject matter requires a drawing to be properly understood and the applicant has not furnished such drawing, the Director may require its submission within a time period of not less than two months from the sending of a notice thereof. Drawings submitted after the filing date may not be used to overcome the insufficiencies of the specification due to lack of an enabling disclosure, nor to extend the scope of the originally submitted application. The drawings have a series of formal requirements that can be check here.
• Oath or declaration: the inventor must sworn, in front of a notary public, an oath, stating that he or she believes himself or herself to be the original inventor of the claimed invention in the application and that the application was made or authorized to be made by him or her. In lieu of an oath, a declaration may be submitted, and it does not need to be notarized. It must be made in non-provisional applications including utility, design, plant and reissue.
• Nucleotide and Amino Acid Sequence Listing (when necessary)
• Large tables or Computer Listings (when necessary)

Procedures Before the Patent and Trademark Office (USPTO):

New applications are initially processed by the Application Division. The Application Division decides if an application is complete and meets all formal requirements.

• The drawings are forwarded by to the official draftsman, who checks the drawings to see if they comply with the formal requirements for drawings.

The USPTO maintains a detailed classification system, and each invention is classified in a specific category and subcategory. Each class has an examining group

Examination:

Each application is assigned to the appropriate art and then to a particular examiner, who checks the compliance of the elements required to obtain a filing date: a written description, a claim and any required drawing.

Then, the examiner search for prior art relevant to the claimed invention.

The Office Action:

An office action is the written communication that the examiner sends to the applicant, his attorney or agent in case that one has been appointed. The office action includes a form cover letter, on which the examiner summarizes the action by checking the appropriate boxes and filling in the correct blanks, and an explanation of the action.

The response:

The applicant must respond to the examiner’s rejections and objections within the established period. Otherwise, the application will be held abandoned. The maximum statutory period for the response is of six months, upon payment of a fee.

The response can be:

• An amendment of the claims and arguments specifically addressing the examiner’s Action,
• An amendment of the written description to include the language of an originally filed claim if the examiner rejects or objects to a claim as not being supported by the written description,
• An amendment of the written description in response to an objection of lack of clarity at the description of the invention, as long as the applicant do not introduce additional information to the description.

From the issuance of an Office Action, the applicant or the applicant’s representative is entitled to an interview with the examiner for the purpose of clarifying the issues and of reaching an agreement leading to the allowance of the application.

Reconsideration and allowance:

The examiner reconsiders the application after the response, and if he is satisfied, he issues a Notice of Allowance, informing the applicant of the allowance of the application.

If the examiner is not satisfied with the response, he may issue a second Office Action, and unless it is based on a new ground of rejection, the rejection may be made “final” by the examiner.

The Final Office Action:

After a final rejection by the examiner, the applicant may:

• Abandon the application,
• File an appeal with the Board of Patent Appeals and Interferences,
• Take allowed claims (if any) and cancel others, or
• File a continuing application.

Publication:

Under 35 USC §122, each application should be published promptly after the expiration of a period of eighteen months from the earliest filing date.

An application shall not be published if that application is:

• No longer pending;
• Subject to a secrecy order;
• A provisional application or
• An application for a design patent.

Additionally, an applicant may make a request upon filing, certifying that the invention disclosed in the application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement that requires publication of applications 18 months after filing, the application shall not be published.

Other procedures:

Foreign priority:

An applicant can claim the benefit of the filing date of an application field in any of the members to the Paris Convention, under 35 USC §119. Priority can be claimed at any time during the pendency of an application, and it is perfected by filing a certified copy of the foreign application.

Interference:  

When two or more applications claim the same subject matter, the applications are said to be interfering, and the examiner, after determining the patentability of the invention of each applicant, can declare an interference between them, to decide which of the parties was the first to make the invention.

Under the Andean Community, the patent application may only relate to one invention or to a group of inventions so related as to constitute a single inventive concept. This is called “unity of invention”.

Requirements of an application under the Andean Community:

The application for a patent shall be filed with the competent national office, and no member country shall impose requirements of form on the patent application that are additional to or different from those provided for in the Decision. It shall contain the following:

• The request: this request shall be set down on a form, and shall contain:
  • A request that a patent be granted
  • The name and address of the applicant
  • The nationality or domicile of the applicant. Where the applicant is a legal entity, its place of incorporation shall be specified.
  • The name of the invention
  • The name and domicile of the inventor where he is not the applicant
  • Where applicable, the name and address of the legal representative of the applicant
  • The signature of the applicant or of his legal representative; and
  • Where applicable, the date, number and office of filing of any application for a patent or other title of protection that may have been filed or obtained abroad by the same applicant or his principal and that refers entirely or partly to the same invention as is claimed in the application field in the member country.
• The description: it shall disclose the invention in a manner sufficiently clear and complete to be understood and for a person skilled in the corresponding technical field to be able to carry it out. The description of the invention shall state the name of the invention and include the following information:
  • The technological sector to which the invention relates or applies;
  • The previous technology known to the applicant that may be useful for understanding and examining the invention, and references to earlier documents and publications relating to the said technology;
  • An account of the drawings, if any have been filed;
  • A description of the best method known to the applicant of carrying out the invention or putting it into practice, with the use of examples and references to the drawings where the latter are relevant; and
  • A mention of the way in which the invention meets the condition of industrial applicability, if this is not clear from the description or the nature of the invention.
• One or more drawings, where necessary for the understanding of the invention. Those shall be considered an integral part of the description.
• When the invention relates to a product or process involving biological material, and the invention cannot be described in such a way as to be understood and carried out by a person skilled in the technical field, the description shall be completed with a deposit of the said material.
  • The deposit shall be made not later than on the filing date of the application in the member country or, where applicable, on the filing date of the application the priority of which is claimed.
  • Deposits effected with an international depositary authority recognized under the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure (1977), or with another institution recognized by the national office competent in that connection, shall be considered valid.
    • In such a case, the description shall state the name and address of the depositary institution, the date of deposit and the deposit number assigned to it by the institution. The deposit of biological material shall be valid for the purposes of the grant of a patent only if it is made in such a way that any interested party may obtain samples of the material not later than the 18-months period given for the file to be declared public.

• One or more claims: the claims shall define the subject matter to be protected by the patent. They shall be clear and concise and entirely supported by the description.

They may be either independent, when it defines the subject matter to be protected without reference to another earlier claim; or dependent, when it refers to two or more earlier claims.

• The abstract: it shall consist of a summary of the technical disclosure contained in the patent application. The abstract shall serve only for the purposes of technical information and shall in no way influence the interpretation of the scope of protection afforded by the patent.
• Such powers of attorney as may be necessary
• Proof of payment of the prescribed fees

And, where applicable:

• A copy of the access contract where the product or processes for which a patent is sought have been obtained or developed from genetic resources or products derived therefrom of which any of the member countries is the country of origin; and/or
• A copy of the document accrediting the licensing or the authorization of the use of the traditional knowledge of the indigenous, Afro-American or local communities of member countries where the products or processes for which protection is sought have been obtained or developed from such knowledge of which any of the member of its amendments and implementing regulations as are in force; and/or
• The certificate of deposit of biological material; and/or
• A copy of the document attesting the assignment of the right to the patent by the inventor to the applicant or to his principal.

In case that the competent national office has reasonable doubt concerning some element of the application in the course of the processing of the application, it may demand that the necessary evidence be filed.

Date of receipt of the application: the filing date thereof, provided that, at the time of receipt, it contains at least (i) a mention that the grant of a patent is applied for, (ii) the particulars identifying the applicant or the person filing the application or which enable the competent national office to communicate with that person, (iii) a description of the invention, (iv) drawings if they are relevant and (v) proof of payment of the prescribed fees.

Failure to comply with any of the requirements specified above shall cause the competent national office to regard the application as not having been accepted for processing, and no filing date shall be assigned to it.

Changes to applications

• What if I need to amend my application?

The applicant for a patent may request that his application be amended at any time during the processing thereof. The amendment may not involve any broadening of the protection that would have been accorded to the disclosure contained in the initial application. Any clerical error may be corrected in the same way.

• Conversion of an application:

At any time in the processing of the application, the applicant may request that it be converted into an application for a utility model patent, which shall only be allowed when the nature of the invention permits. It may be filed only once, and the converted application shall retain the filing date of the original application.

The conversion of the application may be suggested by the Competent office too, at any stage in the processing thereof, and may also charge an additional fee for the filing of conversion requests.

In that case, the applicant may accept or reject the suggestion, on the understanding that processing of the application in respect of the type of rights originally applied for shall continue if it is rejected.

• Division of an application:

As it was mentioned before, a patent should only relate to one invention or to a group of inventions so related as to constitute a single inventive concept; which is called “unity of inventions“.

If a patent application does not fulfill this requirement, it shall be dismissed. For this not to happen, the applicant may, at any stage in the processing, divide his application into two or more divisional applications, but none of them may involve any broadening of the protection accorded to the disclosure contained in the original application.

The competent national office may require the applicant to divide the application if it does not fulfill the condition of unity of invention at any stage in the proceedings.

Towards the dates…

• Every divisional application shall have the same filing date as the original application, and the same priority date where applicable.
• Where multiple or partial priorities have been claimed, the applicant or the competent national office shall specify the priority date or dates corresponding to the subject matter that should be covered by each of the divisional applications.

For the purposes of the division of an application, the applicant shall file such documents as may be necessary to make the corresponding divisional applications complete.

• Merging of two or more applications:

The applicant may, at any stage in the proceedings, merge two or more applications into one, but that may not involve any broadening of the protection that would have been accorded to the disclosure contained in the initial applications.

Not merging shall be allowed where the merged application would include inventions that do not meet the condition of unity of invention. The merged application shall have the same filing date and the same priority date or dates where applicable, as have been accorded to the subject matter contained in the initial applications.

Procedure up to grant:

Processing of the Application:

After 30 days following the filing date of the application, the competent national office shall examine whether it fulfills the conditions of form provided for in the Decision:

If application does not fulfill the conditions:

• The office shall notify the applicant, so that he may meet those conditions within a period of two months following the date of notification. A party can request to extend that period once by an equal amount of time.
  • If he meets the conditions, procedure keeps going.
  • If he fails to meet the conditions, the application shall be considered abandoned, and its priority shall be lost.

If application fulfills the conditions,

• The file shall be declared public, it is inspected, and the competent national office shall order its publication, in a period of 18 months after the filing date of the application

After publication, any person with a legitimate interest may file one reasoned opposition contesting the patentability of the invention within a period of 60 days. A party can request an additional period of 60 days for the substantiation of the opposition

• The opposition is notified to the applicant, so that he may present his arguments, submit documents or revise the claims or description of the inventions if he considers it relevant or convenient within a period of 60 days. The competent national office can grant an additional period of 60 days if requested by a party.

The applicant may request publication of the application at any time after the completion of the examination. 

• Within a period of six months, the applicant shall request that the invention be examined for patentability, whether there is a filed opposition or not.
  • If that period expires without the applicant’s request, the application shall lapse.
• The competent national office can find that the invention is not patentable or does not comply with one of the requirements of the Decision, which will be notified to the applicant for him to respond within a period of 60 days, and can be extended once for a period of 30 additional days.
  • If the applicant fails to respond to the notification within the periods specified or if there are still obstacles to grant in spite of the response, the competent national office shall refuse the patent.
• The competent national office may solicit reports from experts, from scientific technological bodies considered suitable or from other industrial property offices (if it fits), to have their opinion on the patentability of the invention.
• The competent national office can also request the applicant to submit some documents related with one or more filed foreign  applications within a maximum period of three months. The documents requested by the competent national office may be:
  • A copy of the application; of its findings on novelty and patentability;
  • A copy of the patent or protection title given on the basis of that application;
  • A copy of any judgement or decision by which the foreign application has been:
    • Rejected,
    • Denied,
    • Cancelled, or
    • Invalidated
• If the applicant fails to submit the documents requested, the competent national office shall refuse the patent.

If final examination is favorable, the patent shall be granted.

After the Application:

Acts after the grant:

• The owner of the patent may ask the competent national office to amend the patent in order to reflect a change in the name, address, domicile or other particulars of the owner or inventor, or to alter or limit the scope of one or more of the claims. He may likewise request the correction of any clerical error in the patent. The dispositions about the amendment or correction of an application shall apply as appropriate.
• The owner of the patent may renounce to one or more claims of the patent or the patent as a whole in a declaration addressed to the competent national office. Renunciation shall be effective as from the date of receipt of the said declaration.
• The owners of a patent may divide it into two or more divisional patents. The provisions on the division of an application shall be applicable as appropriate.

The competent national office may provide for fees to be charged for acts performed after the grant of the patent.

Refusal, Lapse and Invalidity of the Patent:

Invalidity of the Patent:

The competent national authority shall decree the absolute invalidity of a patent at any time, either ex officio or at the request of any person, where:

• The subject matter of the patent does not constitute an invention.
• The invention does not fulfill the requirements of patentability.
• The patent has been granted for a non-patentable invention, in the aforementioned terms (see Art. 20 – Dec. 486/00).
• The patent does not disclose the invention.
• The claims included in the patent are not fully supported by the description.
• The patent as granted contains broader disclosure than the original application which has the effect of extending the scope of protection.
• Where applicable, a copy of the access contract has not been filed where the products or processes to which the patent application relates have been produced or developed with genetic resources or derived products of which any member countries is the country of origin.
• Where applicable, a copy of the document evidencing the licensing or authorization of the use of traditional knowledge of the indigenous, afro-american or local communities of the member countries has not been filed where the products or processes for which protection is sought have been produced or developed on the basis of such knowledge of which one of the member countries is the country of origin
• The causative factors of absolute invalidity provided for in the national legislation on administrative acts are present.

Where the causes referred to above affect only one of the claims or parts of a claim, invalidity shall be declared only in respect of those claims or those parts of the claim, as the case may be.

The patent, the claim or the part of the claim that has been invalidated shall be deemed null and void as such as from the filing date of the patent application.

Relative invalidity: the defects in administrative acts that have not brought about absolute invalidity, shall result in relative invalidity. In such cases, the competent national authority shall declare invalidity within the following five years counted from the date of the grant of the patent, as provided in national legislation.

Cancellation of a patent:

Where a patent has been granted to a person not entitled to such grant, the competent national authority may cancel a patent.

Who can brought an action for cancellation? The action for cancellation may only be brought by the person to whom the right to the patent belongs.

Prescription Periods: Five years following the date of grant of the patent, or two years following the date on which the person to whom that right belongs became aware of the exploitation of the invention in the country, whichever period expires first.

Arguments against the action for cancellation: the competent national authority ruling on a case of invalidity shall inform the owner of the patent so that he may present such arguments and submit such proof as he may consider fit.

If that authority is the competent national office, the arguments and proof shall be submitted within the two months following notification. The person concerned may apply for an extension for two further months following notification before the provided period expires.

On the expiry of the aforementioned periods, the competent national office shall rule on the invalidity of the patent, and the parties shall be informed accordingly in a resolution.

The competent national authority may, where this is necessary for a ruling on the invalidity of a patent, request the owner of the patent to submit one or more of the following documents relating to the patent to which the proceedings themselves relate:

• A copy of the foreign application wholly or partly to the same invention as that being examined
• A copy of the findings of novelty or patentability examinations carried out in relation to that foreign application
• A copy of the patent or other protection title that has been granted on the basis of that foreign application
• A copy of the patent or other protection title that has been granted on the basis of that foreign application
• A copy of any judgement or decision by which the foreign application has been rejected or denied
• A copy of any judgement or decision by which the patent or other protection title granted on the foreign application has been cancelled or invalidated.

Lapse of the patent:

In order to keep the patent in force or maintain a pending patent application, as the case may be, annual fees shall be paid as provided by the competent national office. Annual fees shall be paid annually in advance.

The due date of each annual fee shall be the last day of the month in which the application was filed. Two or more annual fees may be paid in advance.

An annual fee may be paid within a six-months period of grace following the starting date of the corresponding annual period, provided that the prescribed surcharged is paid at the same time. During the period of grace, the patent or patent application shall remain in full force.

Failure to pay an annual fee under this provisions shall cause the patent or patent application to lapse automatically.

A European patent application may be filed with the European Patent Office.

If the law of a Contracting State permits so, and subject to the dispositions regarding Divisional Patent Applications, applications may be also filed with the central industrial property office or other competent authority of that State, which shall have the same effect as if it had been filed on the same date with the European Patent Office.

• The divisional application, however, shall be filed directly with the European Patent Office.
  • Only in respect of subject-matter which does not extend beyond the content of the earlier application as filed.
  • It shall be deemed to have been filed on the date of filing of the earlier application.
  • It shall enjoy any right of priority.

That disposition shall not preclude the application of legislative or regulatory provisions that, in any Contracting State, govern inventions which, owing to the nature of their subject-matter, may not be communicated abroad without the prior authorization of the competent authorities of that State; or prescribe that any application is to be filed initially with a national authority, or make direct filing with another authority subject to prior authorisation.

Requirements of a European patent application:

A European patent application shall contain:

• A request for the grant of a European Patent:

The applicant shall designate all the Contracting States party to the EPC at the time of filing of the European Patent Application in the request for grant of a European Patent.

The designation of a Contracting State may be subject to the payment of a designation fee; and it may be withdrawn at any time up to the grant of the European Patent.

• A description of the invention:

The European patent application shall designate the inventor. If the applicant is not the inventor or is not the sole inventor, the designation shall contain a statement indicating the origin of the right to the European patent.

Additionally, the European patent application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept; and it shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

• One or more claims:

The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.

• Any drawings referred to in the description or the claims
• An abstract:

The abstract only serves the purpose of providing technical information about the invention; it may not be taken into account for any other purpose, in particular for interpreting the scope of the protection sought or to be considered as part of the state of the art when analyzing novelty.

The European patent application shall also satisfy the requirements laid down in the Implementing Regulations. The date of filing of a European patent application shall be the date on which the requirements laid down in the Implementing Regulations are fulfilled.

Fees:

A European patent application shall be subject to the payment of the filing fee and the search fee. If the filing fee or the search fee is not paid in due time, the application shall be deemed to be withdrawn.

Renewal fees: Renewal fees for the European patent application shall be paid to the European Patent Office in accordance with the Implementing Regulations. These fees shall be due in respect of the third year and each subsequent year, calculated from the date of filing of the application. If a renewal fee is not paid in due time, the application shall be deemed to be withdrawn.

The obligation to pay renewal fees shall terminate with the payment of the renewal fee due in respect of the year in which the mention on the grant of the European patent is published in the European Patent Bulletin.

Priority right:

If an applicant filed an application for a patent, a utility model or a utility certificate in or for:

• Any State party to the Paris Convention for the Protection of Industrial Property;
• Any Member of the World Trade Center Organization
• Any industrial property authority who recognises that a first filling made with the European Patent Office gives right to a right of priority under conditions equivalent to those laid down in the Paris Convention

In respect of the same invention, shall enjoy a right of priority during a period of twelve months from the date of filing of the first application.

Every filing that is equivalent to a regular national filing under the national law of the State where it was made or under bilateral or multilateral agreements, including this Convention, shall be recognized as giving rise to a right of priority.

• A “regular national filing” shall mean any filing that is sufficient to establish the date on which the application was filed, whatever the outcome of the application may be.

What happens if the first application has been withdrawn, abandoned or refused?

If the previous application has been withdrawn, abandoned or refused, without being open to public inspection and without leaving any rights outstanding, a  subsequent application in respect of the same subject-matter as that previous first application and filed in or for the same State shall be considered as the first application for the purposes of determining priority.

Claiming priority:

An applicant desiring to take advantage of the priority of a previous application shall file a declaration of priority and any other document required, in accordance with the Implementing Regulations.

Multiple priorities may be claimed in respect of a European patent application, notwithstanding the fact that they originated in different countries. Where multiple priorities are claimed, time limits which run from the date of priority shall run from the earliest day of priority.

• If one or more priorities are claimed in respect of a European patent application, the right of priority shall cover only those elements which are included in the application or applications whose priority is claimed.
• Even if certain elements of the invention for which priority is claimed do not appear among the claims formulated in the previous application but are specifically disclosed in the documents of the previous application as a whole, priority may be granted.
• If granted, the date of priority shall count as the date of filing of the European patent application for the dispositions related with the state of the art and the right to a European patent for independent inventions.

Procedure up to grant:

Examination on filing and as to formal requirements:

The European Patent Office (EPO) shall examine, in accordance with the Implementing Regulations, whether the application satisfies the requirements for the accordance of a date of filing.

• If a date of filing cannot be accorded following the aforementioned examination, the application shall not be dealt with as a European patent application.
• If the European patent application has been accorded a date of filing, the EPO shall examine whether the following requirements have been satisfied:
  • It shall be filed in one of the official languages of the EPO (English, French or German) or filed in any other language AND translated into one of those official languages in due time.
  • It shall contain:
    • A request for the grant of a European patent;
    • A description of the invention;
    • One or more claims;
    • Any drawings referred to in the description or the claims;
    • An abstract
  • It shall designate the inventor.

Where applicable, it shall also

• • File a declaration of priority and any other document required, if the applicant desires to take advantage of the priority of a previous application.

If the EPO notes that there are deficiencies which may be corrected, it shall give the applicant an opportunity to correct them, but if any deficiency noted in the examination and related with the formal requirements  is not corrected, the European patent application shall be refused unless a different legal consequence is provided for by the Convention. Where the deficiency concerns the right of priority, this right shall be lost for the application.

Then, the EPO shall draw up and publish a European search report in respect of the European patent application on the basis of claims, with due regard to the description and any drawings; and 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 at the request of the applicant, before the expiry of that period; the EPO shall publish the European patent application.

If the decision to grant the patent becomes effective before the expiry of the eighteen-months period, the European patent application shall be published at the same time as the specification of the European Patent.

The EPO shall examine on request whether the European patent application and the invention to which it relates meet the requirements of the Convention. The request shall not be deemed to be filed until the examination fee has been paid.

The application shall be deemed to be withdrawn if:

• The applicant doesn’t made the request for examination in due time; or
• If the applicant fails to reply in due time to any communication from the Examining Division

If the examination that the application or the invention to which it relates does not meet the requirements of the Convention, the Examining Division shall invite the applicant, as often as necessary, to file his observations and amend the application.

The applicant shall be given at least one opportunity to amend the application of his own volition; but (i) the patent application may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed, nor (ii) the European patent to extend the protection it confers.

If the Examining Division is of the opinion that the European patent application or the invention to which it relates does not meet the requirements of this Convention, it shall refuse the application unless the Convention provides for a different legal consequence.

If the Examining Division is of the opinion that the European patent application and the invention to which it relates meet the requirements of the Convention, it shall decide to grant a European patent, provided that the conditions laid down in the Implementing Regulations are fulfilled. This decision shall take effect on the date on which the mention of the grant is published in the European Patent Bulletin.

After the mention of the grant of the European patent has been published in the European Patent Bulletin, the EPO shall publish the specification of the European patent as soon as possible.

Opposition and limitation procedure:

What if I want to oppose to the grant of a patent?

Any person may give notice to the EPO of opposition to a patent within nine months of the publication of the mention of the grant of the European patent in the European Patent Bulletin.

The Notice of Opposition shall not be deemed to have been filed until the opposition fee has been paid. It applies to the European patent in all the Contracting States in which the patent has effect.

Parties to the opposition proceedings: the Opponents as well as the Proprietor of the patent.

If a person provides evidence that in a Contracting State, following a final decision, he has been entered in the patent register of such State instead of the previous proprietor, such person shall, at his request, replace the previous proprietor in respect of such State. The previous proprietor and the person making the request shall not be regarded as joint proprietors unless both so request.

What are the grounds for opposition?

• The subject-matter of the European patent is not patentable if:
  • It is a discovery, a scientific theory or a mathematical method,;
  • It is an aesthetic creation;
  • It is a scheme, a rule or a method for performing mental acts, playing games or doing business, and programs for computers;
  • It is a presentation of information
  • It is related with:
    • If the commercial exploitation of an invention would be contrary to “ordre public” or morality. Such exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation in some or all of the Contracting States.
    • Plant or animal varieties or essentially biological processes for the production of plants or animals (except for microbiological processes or the products thereof).
    • Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body; this provision shall not apply to products, in particular substances or compositions, for use in any of these methods.
  • It is not new, does not involve an inventive step or is not susceptible of industrial application.
• The european patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art
• The subject-matter of the European patent extends beyond the content of the application as filed, or, if the patent was granted on a divisional application or on a new application filed by a non-entitled person beyond the content of the earlier application as filed.

If the opposition is admissible, the Opposition Division (OD) shall examine whether at least one ground for opposition prejudices the maintenance of the European patent. The OD shall invite the parties to file observations on communications from another party or issued by itself as often as necessary.

The proprietor of the patent can amend the patent through those communications. After all of this process, the OD will decide:

1. To revoke the European patent, if at least one ground for opposition prejudices the maintenance of the European patent.
2. To maintain the patent as amended, if it meets the requirements of the EPC after the amendments made by the proprietor of the European patent, provided that the conditions laid down in the Implementing Regulations are fulfilled.
3. To revoke the patent, if it do not meet the requirements of the EPC after the amendments.

If the European patent is maintained as amended, the EPO shall publish a new specification of the European patent as soon as possible after the mention of the opposition decision has been published in the European Patent Bulletin.

Costs incurred shall be beared by each party to the opposition, unless decided otherwise by the OD for reasons of equity. The Implementing Regulations lay down a procedure for fixing costs, and any final decision of the EPO related with cost fixation shall be dealt with in the same way as a final decision given by a civil court of the State in which enforcement is to take place.

Intervention of the assumed infringer:

Any third party may, in accordance with the Implementing Regulations, intervene in opposition proceedings after the opposition period has expired, if the third party proves that (a) proceedings for infringement of the same patent have been instituted against him or, (b) following a request of the proprietor of the patent to cease alleged infringement, the third party has instituted proceedings for ruling that he is not infringing the patent.

An admissible intervention shall be treated as an opposition. Therefore, the aforementioned rules are applicable in the same way.

• Request for limitation or revocation:

The proprietor can request, with the EPO, to revoke or limit the European Patent by an amendment of the claims. The request, however, may not be filed while opposition proceedings in respect of the European patent are pending.

Once the request is filed, the EPO shall examine whether the requirements for limiting or revoking the European patent have been meet. If the request meets these requirements, the EPO shall decide to limit or revoke the European patent in accordance with the Implementing Regulations. Otherwise, it shall reject the request. The requirements, as stated by Rule 92, are:

• The request shall be filed in writing in one of the official languages of the EPO. It may also be filed in an official language of a Contracting State, provided that a translation is filed in one of the official languages of the EPO, following the rules regarding translation.
• It shall contain:
  • Particulars of the proprietor making the request and an indication of the Contracting States for which the requester is the proprietor of the patent
  • The number of the patent whose limitation or revocation is requested, and a list of the Contracting States in which the patent has taken effect;
  • Where appropriate, the names and addresses of the proprietors of the patent for those Contracting States in which the requester is not the proprietor of the patent, and evidence that the requester is entitled to act on their behalf in the proceedings;
  • Where the requester has appointed a representative, particulars of the representative.

This decision shall apply to the European patent in all Contracting States in respect of which it has been granted, and shall take effect on the date on which the mention of the decision is published in the European Patent Bulletin.

If the EPO decides to limit the European patent, it shall publish its amended specification  as soon as possible, after the mention of the limitation has been published in the European Patent Bulletin.

Appeals procedure:

Which kind of decisions can be appealed?

Decisions from the Receiving Section, Examining Divisions, Opposition Divisions and the Legal Division. It shall have suspensive effect, which means that the contested decision has no legal effect until the appeal is resolved.

If a decision does not terminate proceedings as regards one of the parties can only be appealed together with the final decision, unless the decision allows a separate appeal.

The right to file an appeal against decisions relating to the apportionment or fixing costs in opposition proceedings may be restricted in the Implementing Regulations.

Who is entitled to appeal? Who can be a party in an appeal proceeding?

Any party adversely affected by a decision is entitled to appeal it. Any other parties to the proceedings shall be parties to the appeal proceedings as of right.

When do I have to file my Notice of appeal?

The notice of appeal shall be filed within two months of notification of the decision, and within four months of notification, a statement setting out the grounds of appeal shall be filed in accordance with the Implementing Regulations.

Who examines the appeal?

• Interlocutory revision:

Unless the appellant is opposed by another party to the proceedings, the department whose decision is contested shall make an interlocutory revision of the statement of grounds. If that department considers the appeal to be admissible and well founded, it shall rectify its decision. This shall not apply where the appellant is opposed by another party to the proceedings.

If the appeal is not allowed within three months of receipt of the statement of grounds, it shall be remitted to the Board of Appeal without delay, and without comment as to its merit.

• Examination of appeals:

If the appeal is admissible, the Board of Appeal shall examine whether the appeal is allowable. Following the examination as to the allowability of the appeal, the board of Appeal shall decide on the appeal. The Board of Appeal may either:

• Exercise any power within the competence of the department which was responsible for the decision appealed; or
• Remit the case to that department for further prosecution.

If the Board of Appeals remits the case for further prosecution to the department whose decision was appealed, that department shall be bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same. If the decision under appeal was taken by the Receiving Section, the Examining Division shall also be bound by the ratio decidendi of the Board of Appeal.

The role of the Enlarged Board of Appeal:

The Board of Appeal has two different roles.

First, it shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the Enlarged Board of Appeal if it considers that a decision is required to (i) ensure uniform application of the law or if (ii) a point of law of fundamental importance arises. In those procedures, the parties would be the same as in the appeal proceedings; and the decision of the Enlarged Board of Appeal shall be binding on the Board of Appeal in respect of the appeal in question.

Second, the Enlarged Board of Appeal reviews any petition filed by a party, adversely affected by the decision of the Board of Appeal, who wants to appeal that decision. The petition may only be filed on the following grounds:

1. If the members of the Board of Appeal had any personal interest on the case, or if they were previously involved as representatives of one of the parties, or if they participated in the decision under appeal; or if the member took part on the decision despite being excluded under the corresponding procedure;
2. The Board of Appeal included a person not appointed as a member of the Boards of Appeal;
3. If a decision is not only based on grounds or evidence on which the parties concerned have had an opportunity to present their comments, or if the decision is not taken in relation only with the text submitted to it, or agreed by the applicant or the proprietor of the patent.
4. Any other fundamental procedural defect defined in the Implementing Regulations occurred in the appeal proceedings; or
5. A criminal act that may have had an impact on the decision, impact established under the conditions laid down in the Implementing Regulations.

The petition for review shall not have suspensive effect; and shall be filed in a reasoned statement. If the petition is based on the reasons 1 to 4, the petition shall be filed within two months of notification of the decision of the Board of Appeal; while, if based on 5, it shall be filed within two months of the date on which the criminal act has been established and in any event no later than five years from notification of the decision of the Board of Appeal. The petition shall not be deemed to have been filed until after the prescribed fee has been paid.

The Enlarged Board of Appeal shall examine the petition for review. If the petition is allowable, the Enlarged Board of Appeal shall set aside the decision and shall re-open proceedings before the Boards of Appeal in accordance with the Implementing Regulations.

If a person has in good faith used or made effective and serious preparations for using an invention which is the subject of a published European patent application or a European patent in the period between the decision of the Board of Appeal and publication in the European Patent Bulletin of the mention of the decision of the Enlarged Board of Appeal on the petition, may without payment continue such use in the course of his businesses or for the needs thereof.

Common provisions governing procedure:

• All of the EPO’s decisions shall be based on grounds or evidence on which the parties have had an opportunity to present their comments.
• Third parties (which means, not parties to the proceedings) are allowed to present observations concerning the patentability of the invention to which the application or patent relates.
• The means of giving or obtaining evidence are (but are not restricted to):
  • Hearing the parties
  • Requests for information
  • Production of documents
  • Hearing witnesses
  • Opinions by experts
  • Inspection
  • Sworn statements in writing
• Decisions, summonses, notices and communications shall be notified by the EPO of its own motion in accordance with the Implementing Regulations. Notification may, where exceptional circumstances so require, be effected the intermediary of the central industrial property offices of the Contracting States.
• Request for further processing: An applicant may request further processing of the European patent application if he fails to observe a time limit (under the compliance of certain circumstances defined in the Implementing Regulations).
• Re-establishment of rights: If an applicant or proprietor who was unable to observe a time limit in spite of having take all due care required by the circumstances, the EPO shall re-establish his rights upon request if the non-observance of this time limit has the direct consequence of causing the refusal of the European patent application to have been withdrawn, or the revocation of the European patent, or the loss of any other right or means of redress. If the aforementioned conditions are met, the EPO shall grant the request.
• As long as the amendment is not made to extend the application beyond its content as filed, or as to extend the protection it confers, the European patent application can be amended in proceedings before the European Patent Office, in accordance with the Implementing Regulations. The applicant shall be given at least one opportunity to amend the application of his own volition.
• Regarding prior art information, the EPO may invite the applicant to provide information on prior art taken into consideration in national or regional patent proceedings and concerning an invention to which the European patent application relates. The patent application shall be deemed to be withdrawn if the applicant fails to reply in due time to that invitation.
• In the absence of procedural provisions on the Convention, the EPO shall take into account the principles of procedural law generally recognized in the Contracting States.

Disclaimer:

The information published in this website is merely informative, and even though it might be helpful when trying to understand some of the topics related with Patent Law, it does not replace the advice or representation of a licensed attorney under any circumstance. The application of the legal dispositions depend on each specific case, and it may vary.

Purdue University is not responsible for the consequences that may result from the use of this website.

Main objective:

The main objective of this research project is to make Patent Law a more understandable topic for all of the people who might be interested on the topic, regardless of their major or research interest.

The Legal Regimes that were studied are:

• The Andean Community Regime
• The European Patent Convention
• The United States Regime

For each regime, a series of criteria were selected. Each of the following topics try to answer some specific questions about Patent Law:

• Patentability Requirements and their meaning:
  • What should my invention fulfil in order to get protection?
• Ownership:
  • Who can be the owner of what I have done?
  • Why?
  • Can someone else have the rights over my creation?
  • Under what terms?
• Procedural Issues:
  • What do I have to do to protect my invention?
• Rights and Obligations:
  • My patent was granted. Now what?
  • What can and cannot I do?
• Compulsory Licenses Regime:
  • So, the Government can limit my rights?
  • How?
  • Under what circumstances?

To navigate through the website:

The content of this website is classified in three main categories: Introductory Remarks, Legal Systems and Content.

• Under the category “Introductory Remarks“, it is possible to find all the information related with the project, some basic information about Intellectual Property Rights and a brief introduction about the different legal regimes.
• By clicking the “Legal Systems” category, it is possible to check all of the posts related with the choosen regime.
• Under the “Content” category, it is possible to check the selected topic under all of the different regimes.

Rights:

Term of protection:

The US Regimen contemplates three different kinds of patents, each one with its own characteristics and time of protection, as it can be seen on the following chart:

Rights conferred:

Under the US Regime, the rights conferred to the patentee are the rights to exclude others from:

• Making;
• Using;
• Selling;
• Offering for sale and
• Importing the patented invention

As established by §154(a)(1), for the time of protection of the granted patent: activity prior to issuance that would have resulted in a finding of infringement during the life of the patent is not actionable. It is also unenforceable after it expires.

Geographical scope of protection: The aforementioned rights may be enforced within and throughout the United States. The invention can only be imported into the United States.

Limitations:

This information has been taken from:

HALPERN, Sheldon W.; NARD, Craig Allen & PORT, Kenneth L. (2011). Fundamentals of United States Intellectual Property Law: Copyright, Patent, Trademark. Great Britain: Kluwer Law International BV.

As any right, the right to exclude that emerges from the grant of a patent has limitations, that can be classified as follows:

1. The doctrine of the Patent Misuse
2. Doctrines of First Sale, Implied License and Repair/Reconstruction
3. Experimental Use Exception
4. Governmental Inmunity

1. The doctrine of the Patent Misuse:

2. Doctrines of First Sale, Implied License and Repair/Reconstruction:

The infringement of a Patent starts with certain acts performed without authority. The mentioned authorization can be express or implicit.

The acts that give rise to an implicit authorization are:

2.1. First sale of the patented invention: Unless there is any agreement to the contrary, the user is free to use or resell that patented product after the first sale.

2.2. Where the circumstances necessitate an implied license: Under the ruling of the United States Court of Appeals, Federal Circuit, in the case Wang Laboratories Inc., v. Mitsubishi Electronics America Inc., the categories of conduct that give rise to an implied license are:

• Acquiescence
• Conduct
• Equitable estoppel
• Legal estoppel

2.3. Where a patented product has merely been repaired: The authorized purchaser may repair or replace damaged or worn parts of the patented invention necessary for use. However, this authorization does not allow the purchaser to reconstruct a patented product from the parts of worn-out products.

3. Experimental use exception:

Under §271(a), the mere use of a patented product constitutes an infringement. However, some theories suggest that the use of a patented product for non-commercial, experimental purposes is not an act of infringement, particularly to the pharmaceutical industry.

That exception is included as so in §271(e), which states that “it shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into the United States a patented invention […] solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use or sale of drugs or veterinary biological products”.

4. Governmental Immunity:

This topic has already been addressed, and it can be checked here, under the section “Uses by the US Government”.

This information has been taken from:

THOMAS, John R. (2014) Compulsory Licensing of Patented Inventions. CRS – Congressional Research Service. Available in: https://www.ipmall.info/sites/default/files/hosted_resources/crs/R43266_140114.pdf

The Title 35 of the US Code does not include a general compulsory licensing provision. However, a series of circumstances must be taken on account when addressing the US Compulsory Licensing Regime.

On one hand, the United States is a member of the Convention of Paris for the protection of Industrial Property, and a party of the Agreement on Trade-Related Aspects of Intellectual Property Rights (for being a member of the World Trade Organization). Both of these international multilateral agreements address compulsory patent licenses.

On the other hand, other domestic laws include provisions that allow for the compulsory licensing of patented inventions and, additionally, circumstances similar to a compulsory license may occur through judicial determinations in patent infringement, antitrust enforcement and activities of federal government.

Domestic laws:

The dispositions that allow for the compulsory licensing of patented inventions are:

• The Atomic Energy Act: the Nuclear Regulatory Commision may, after giving the patent owner an opportunity for a hearing, declare any patent to be affected with the public interest if the invention or discovery covered by the patent is of primary importance in the production or utilization of special nuclear material or atomic energy and the licensing of such invention or discovery under this section is of primary importance to effectuate the policies and purposes tending to develop and control atomic energy.
• The Clean Air Act: after the certification of the Attorney General, a district court of the United States may issue an order requiring the licensing of a patent when its use is necessary to comply with the implementation of the requirements mentioned in the standards of performance for new stationary sources, hazardous air pollutants or emission standards for new motor vehicles or new motor vehicle engines; there are no reasonable alternative methods to accomplish such purpose and that the unavailability of such right may result in a substantial lessening of competition or tendency to create a monopoly in any line of commerce in any section of the country.
• The Plant Variety Protection Act: the competent authority may declare a protected variety open to use on a basis of equitable remuneration to the owner, not less than a reasonable royalty, when it is determined that such declaration is necessary in order to insure an adequate supply of fiber, food, or feed in the United States and that the owner is unable to supply the public needs for the variety at a price which may be reasonably be deemed fair.

However, those dispositions have never been invoked. Some commentators consider that the threat of a compulsory license may induce the grant of contractual licenses on reasonable terms. (PERICLES LADAS, Stephen. (1975) Patents, Trademarks and Related Rights: National and International Protection. Cambridge, Massachusetts: Harvard University Press).

Dispositions similar to Compulsory Licensing:

Antitrust Enforcement:

The enforcement of antitrust laws may end up in a patent owner agreeing to license its patents to competitors or being compelled to do so.

The “march-in right” of the Bayh-Dole Act:

The “march-in right” contained in the Bayh-Dole Act allows the funding agency to grant additional licenses to other responsible applicants for patents made using federal funding.

The license can be nonexclusive, partially exclusive or exclusive in any field, upon terms that are reasonable under the circumstances and only where the contractor:

• Has not taken, or is not expected to take, effective steps to achieve practical application of the invention;
• Has not reasonably satisfied health and safety needs;
• Has not met requirements for public use specified by Federal regulations; or
• Has granted an exclusive right to use the patented invention to another without obtaining the promise that the invention will be manufactured substantially in the United States.

Judicial Denial of Injunction:

Before the ruling in the case eBay Inc. v. MercExchange, LLC, courts used to issue an injunction, for the infringer to stop using the patented invention.

Under the eBay ruling, however, courts must weigh equitable factors to determine if an injunction should issue, such as:

• Whether the patent proprietor suffered an irreparable injury;
• The award of damages would be inadequate to compensate for that injury;
• Considering the balance of hardships between the patent owner and the infringer, an injunction is warranted; and
• The public interest would not be disserved by a permanent injunction.

In most of the cases, courts often award an injunction to the prevailing patentee, but they can decline to do so where (i) the patent owner does not commercialize the claimed invention, where (ii) the patented invention forms a small component of a larger product, and where (iii) the patent owner had liberally licensed its patented invention to others.

In such cases, the adjudicated infringer may continue to practise the patented invention, but usually must pay a royalty to the patent proprietor until the term of the patent expires. This has been called an “ongoing royalty”, which theoretically differs from a compulsory license because it is adjudicated to a specific infringer, but whose effects are very similar in practice.

Uses by the US Government:

As a general principle, the government possesses the power to take private property for public use, and it could potentially apply to Intellectual Property rights.

In fact, Title 28, in its section 1498, establishes the procedure to be followed in case that the Government makes or uses a protected invention. 28 USC §1498 (a) states that:

“Whenever an invention described in and covered by a patent of the United States is used or manufactured by or for the United States without license of the owner thereof or lawful right to use or manufacture the same, the owner’s remedy shall be by action against the United States in the United States Court of Federal Claims for the recovery of his reasonable and entire compensation for such use and manufacture”.

The application is required to be made or authorized by the actual inventor of the claimed subject matter. Also, the inventor must sign a statement, under oath, that acknowledges the duties attendant to obtain a patent, as required under §§111 – 115 of the United States Code.

Even though the proprietary rights of a patent initially vest in the inventor, those rights are considered a form of personal property, which means that they can be transferred. Therefore, it is fundamental to differentiate between “ownership” and “inventorship”.

In the case Beech Aircraft Corp. v. EDO Corp. (990 F.2d 1237 (1993)), the United States Court of Appeals stated that:

Inventorship is a question of who actually invented the subject matter claimed in a patent, while ownership is a question of who owns legal title to the subject matter claimed in a patent.

Ownership allows the owner to:

• Grant a patent license
• Assign patent shares
• Sue per infringement of that patent

Characteristics that, despite its importance, are not a part of Inventorship. The proprietary rights in a patent rest with the owner and can be conveyed to another by mutual agreement even before the invention is conceived. Those rights can be parcelled out by assignment or license.

To take into account: Ownership and licensing of patent rights are matters of state contract law, as it was stated in cases as McCoy v. Mitsuboshi Cutlery, Inc. (1995)

• Who can be the owner of a patent?

Under the US Regime, any person, corporation commercial laboratory or legal entity may be the owner of a patent.

• Joint ownership:

Under the US Regime, joint ownership is possible. Each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent and without accounting to the other owners.

The proportion of the co-owners’ shares is relevant only when an award is recovered for infringement, where each of the co-owners is given his proportionate share.

Unlike the requirements of the Andean Community or under the European Patent Convention, under the United States system Patents shall be granted for inventions, designs or plants whose subject matter is susceptible to be patentable, are new and fulfill the requirement of non-obviousness.

Patentable Subject Matter:

Whoever invents or discovers any:

• New and useful process,
• Machine,
• Manufacture or composition of matter, or
• Any new and useful improvement thereof

May obtain a patent therefore, subject to the legal conditions and requirements.

Novelty:

An invention would not fulfill the novelty requirement if:

• The claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
• The claimed invention was described in a patent issued under §151 or in an application for patent published or deemed published under §122 (b), in which the patent or application, as the case may be, names another inventor and was effectively filed with respect to any subject matter described in the patent or application before the effective filing date of the claimed invention.

Determining prior art: to determine whether a patent or application for patent is prior art to a claimed invention, it shall be considered to have been effectively filed 

• Under regular circumstances, as of the actual filing date of the patent or the application for patent; or
• As of the filing date of the earliest application that describes the subject matter when the patent or the application of the patent is entitled to
  • Claim a right of priority [§119, §365 (a) or §365 (b)]; or
  • Claim the benefit of an earlier filing date [§120, §121 or §365 (c)]

Based upon one or more prior filed applications for patent.

Exceptions:

Disclosures made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention. For this provision to apply, it has to met one of the following conditions:

• The disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
• The subject matter disclosed had been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor before such disclosure.

Disclosures appearing in Applications and Patents shall not be prior art to a claimed invention if:

• The subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
• Before being effectively filed, the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
• The subject matter disclosed and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person not later than the effective filing date of the claimed invention.

When the latter disposition refer to “owned by the same person or subject to an obligation of assignment to the same person”, it refers to:

• Subject matter developed and claimed invention made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
• Claimed invention made as a result of activities undertaken within the scope of the joint research agreement and
• The application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

When the Application discloses or is amended to disclose the names of the parties to the joint research agreement.

Non-obviousness:

Even if the invention is not identically disclosed or described as it was mentioned above, a patent for a claimed invention may not be obtained if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date if the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.

Patentability shall not be negated by the manner in which the invention was made.

The European Patent Convention does not contain any disposition related with a Compulsory License Regime, which means that it is not possible to issue a Compulsory License under the EPC regime.

Therefore, each country shall regulate the Compulsory Licenses Regime on a national level. In that regard, the European Commission answered to a series of questions on the topic put by some of its members:

European Commission. Parliamentary questions: Answer given by Ms. Bienkowska on behalf of the Commission to questions P-00227/2015, P-00293/2015 and E-000205/2015. (2015)

What is compulsory licensing?

The grant of a Compulsory License means that government allowed someone else to produce the patented product or process without the consent of the patent owner.

Under the Andean Community provisions, a Compulsory License may be granted only

• Three years after the grant of the patent, or four after the application for it (whichever is the longest); or
• Where the working of the invention has been suspended for more than a year.

Due to the following conditions:

• At the time of request, the owner of the Patent hasn’t complied with his obligations as provided in the member country in which the license is applied for; or
• Where the working of the invention has been suspended for more than a year.

The competent national office may grant a compulsory license for the industrial manufacture of the product to which the patent relates, or for the use of the patented process.

A compulsory license is granted by the competent national office at the request of any interested party. However, the owner can provide legitimate reasons for his failure to act, which may be reasons of force majeure in accordance with the domestic provisions of each member country. In that case, the compulsory license shall not be granted.

A compulsory license shall only be granted where the person who requests it has previously attempted to obtain a contractual license from the owner of the patent on reasonable commercial terms and conditions, and where that attempt has not had any effect within a reasonable time.

A Compulsory License… 

• Shall not be exclusive, and no sublicense may be granted
• May only be transferred with the part of the enterprise or its intangible assets that enable them to be worked; the transfer shall be evidenced in writing and registered with the competent national office. Otherwise, it shall be devoid of legal effect.
• When the circumstances that gave rise to the Compulsory License no longer remain and are unlikely to recur, it may be revoked, subject to the adequate protection of the legitimate interests of the persons who have been authorized under them.
• Its scope and duration shall be limited, according to the purposes for which they have been granted.
• In the case of patents for invention that protect semiconductor technology, the compulsory license shall be granted only for public, non commercial use or to remedy or rectify a practice declared contrary to free competition by the competent national authority, according to the corresponding dispositions.
• Shall provide for adequate remuneration according to the circumstances of each case, due regard being had to their economic value.
• Shall be used mainly to supply the domestic market.

The compulsory licenses that do not conform to the aforementioned provisions, or to the following ones, shall be devoid of legal effect.

Proceeding:

The grant of compulsory licenses shall proceed subject to notification of the owner of the patent, and within the following 60 days, he may present his arguments against the application if he wants to.

The competent national office shall determine the scope or extent of the license. In particular, it shall specify:

• The period for which it is granted;
• Its subject matter;
• The amount of the royalties, which shall be adequate, depending on the particular circumstances of each case. The economic value of the authorization must be specially considered; and
• The conditions for the payment thereof.

Challenges to the compulsory license:

A challenge to the compulsory license shall not prevent exploitation or have any effect on periods that have not expired. Its introduction shall not prevent the owner of the patent from charging, in the intervening period, the royalties specified by the competent national office in respect of the part not challenged.

The licensee shall be bound to exploit the invention within a period of two years following the date of grant of the license, unless he justifies his inaction with a claim of unforeseen circumstances or force majeure. If he fails to do so, the competent national office shall revoke the compulsory license at the request of the owner of the patent.

Public interest and compulsory licenses:

On a declaration by a member country of the existence of public interest, emergency or national security considerations, and only for as long as those considerations remain, the patent may be made subject to compulsory licensing. In that case, the competent national office shall grant such licenses as may be applied for. The owner of the patent so licensed shall be notified where reasonably possible.

Conditions:

The competent national office shall specify the scope or extent of the compulsory license, and in particular:

• The term for which it is granted,
• Its subject matter, and
• The amount of royalties and the conditions for the payment thereof.

The grant of a compulsory license for reasons of public interest shall not diminish the right of the owner of the patent to continue to work the said patent.

Free competition and compulsory licenses:

A compulsory license shall be granted by the competent national office shall, either ex officio or at the request of a party, and after having obtained the consent of the national authority on free competition, where practices are noted that adversely affect free competition, especially an abuse by the owner of the patent of his dominant position on the market.

In such cases, when the amount of royalties is determined, due regard shall be given to the need to correct anti-competitive practices.

Where it is probable that the circumstances that gave rise to it could recur, the competent national office shall refuse to revoke the compulsory license.

Patents which require the use of another patent:

When the owner of a patent whose working requires the use of another has been unable to secure a contractual license on reasonable terms, he can request a compulsory license which the competent national office shall grant at any time.

That license shall be subject to the following rules, without prejudice of the rules mentioned above:

• The invention claimed in the second patent must embody substantial technological progress in relation to that claimed in the first
• The owner of the first patent shall have the right to a cross-license on reasonable terms for exploitation of the invention claimed in the patent; and
• The license under the first patent may not be assigned without the assignment of the second.