Patents

Rights:

Under the European Patent Convention, the grant of a Patent confers to the owner the following rights:

Term of Protection: 20 years from the date of filing of the application.

Contracting States have the right to extend the term of a European Patent, or to grant corresponding protection which follows immediately on expiry of the term of the patent, under the same conditions as those applying to national patents in order to:

• Take account of a state of war or similar emergency conditions affecting that State, or
• If the subject-matter of the European patent is a product or a process for manufacturing a product or a use of a product which has to undergo an administrative authorization procedure required by law before it can be put on the market in that State.

Geographical scope of protection: A European patent application may be licensed in whole or in part for the whole or part of the territories of the designated Contracting States.

Rights conferred: A European Patent shall confer on its proprietor the same rights as would be conferred by a national patent granted in that State, from the date on which the mention of its grant is published in the European Patent Bulletin, and in each Contracting State in respect of which it is granted.

If the subject-matter of the European patent is a process, the protection conferred by the patent shall extend to the products directly obtained by such process.

Any infringement of a European patent shall be dealt with by national law

Do I have to translate my patent application? The European Patent Office has three official languages: English, French and German.

If the European patent as granted, amended or limited by the European Patent Office, is not drawn up in one of the official languages of any Contracting State, it may prescribe that the proprietor of the patent shall supply to its central industrial property office a translation of the patent in the official language required by the State (if prescribed), or in any of its official languages at his choice.

Period for supplying the translation: three months after the date on which the mention of the grant maintenance in amended form or limitation of the European patent is published in the European Patent Bulletin. (Unless the State concerned prescribes a longer period).

Cost of the proceeding: any Contracting State which has adopted the aforementioned (or similar) provisions, may prescribe that the proprietor of the patent must pay all or part of the costs of publication of such translation within a period laid down by that State.

In the event of failure to observe those provisions, the European patent shall be deemed to be void ab initio in that State.

♦ Void ab initio: to be considered invalid from the outset.

Rights conferred by a European Patent Application:

Which are the rights conferred by a European patent application after publication?

Under the EPC, the European patent application shall provisionally confer the same rights as would be conferred by a national patent granted in that State in the Contracting States designated in the application.

Any Contracting State may prescribe that a European patent application shall not confer such protection. However, the protection attached to the publication of the European patent application may not be less than that which the laws of the State concerned attach to the compulsory publication of unexamined national patent applications; and in any event, each State shall ensure at least than, from the date of publication of a European patent application, the applicant can claim compensation reasonable in the circumstances from any person who has used the invention in that State in circumstances where that person would be liable under national law for infringement of a national patent.

If the language of the proceedings is not the official language of the Contracting State, the latter may prescribe that the aforementioned provisional protection shall not be effective until a translation has been made available to the public in the manner prescribed by national law or has been communicated to the person using the invention in the said State.

If the European patent application has been withdrawn, deemed to be withdrawn or finally refused, it shall be deemed never to have had effects. The same shall apply in respect of the effects of the European patent application in a Contracting State the designation of which is withdrawn or deemed to be withdrawn.

How does revocation or limitation of the European patent application and the resulting European patent affects the rights conferred by them?

If the European patent has been revoked or limited in opposition, limitation or revocation proceedings, the European patent application and the resulting European patent shall be deemed not to have had the effect specified from the outset.

How is the extent of protection determined?

The extent of protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.

For the period from the patent application to the 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. 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.

Authentic text of a European patent application:

In any proceedings before the EPO and in any Contracting State, the authentic text shall be the text of the European patent application or the European patent.

However, if the European patent application has been filed in a language which is not an official language of the European Patent Office, the authentic text shall be the application as filed within the meaning of this Convention.

If the European patent application or the European patent in the language of the proceedings confer a narrower protection than that conferred by the language of the translation, any Contracting State may provide that a translation into one of its official languages shall in that State be regarded as authentic, except for revocation proceedings.

If a Contracting State adopts such a provision, it (i) shall allow the applicant for or proprietor of the patent to file a corrected translation of the European patent application or European patent; and (ii) it may prescribe that any person who, in that State, in good faith has used or has made effective and serious preparations for using an invention the use of which would not constitute infringement of the application or patent in the original translation, may, after the corrected translation takes effect, continue such use in the course of his business or for the needs thereof without payment.

Transference of Rights:

The European Patent as an object of property:

A European patent application may be transferred or give rise to rights for one or more of the designated Contracting States. It can be:

• A Transference, which is to be made through an Assignation. It shall be made in writing and shall require the signature of the parties to the contract; or
• A Contractual License, one of the ways to give rise to rights regarding the application without transferring its ownership:

Assignation and Contractual Licensing under the EPC: main differences. Taken from: Harris, Gordon; Carter, Alisa. The basics of patent law – assignment and licensing. (Online resource). April 19th, 2017 (Consulted on August 2nd, 2017).

The European Patent Application as an object of property:

The European Patent Application as an object of property shall, in each designated Contracting State and with effect for such State, be subject to the law applicable in that State to national patent applications.

Rights:

Under the Andean Decision No. 486, the grant of a Patent confers to the owner a series of rights. Those rights are:

Term of protection: The invention will be protected for 20 years from the filing date of the application.

Scope of protection: What is protected is determined by the content of the claims, using the description, drawings and any biological material deposited for their interpretation.

Rights conferred: A patent shall confer on its owner the right to prevent third parties to engage any of the following acts without his consent:

• Where the patent claims a product:
  • Manufacturing the product
  • Offering the product for sale, selling or using it, or importing it for any of those purposes
• Where the patent claims a process:
  • Using the process
  • Carrying out any of the acts aforementioned in relation to a product obtained directly by means of the process.

Exceptions:

A Patent may not confer the rights referred previously for…

• Acts performed in a private circle for non-profit-making purposes
• Acts performed for exclusively experimental purposes on the subject matter of the patented invention
• Acts performed solely for the purposes of teaching or scientific or academic research
• Acts referred to in Article 5ter of the Paris Convention for the Protection of Industrial Property

Paris Convention, Article 5ter: Patents: Patented Devices Forming Part of Vessels, Aircraft, or Land Vehicles.

Additionally, where the patent protects biological material that can be reproduced other than plants, using that material as the basis with which to obtain viable new material does not constitute an infringement of a Patent, except where, to do so, the repeated use of the patented subject matter is required.

A Patent shall not confer the right to prohibit a third party from engaging in commercial acts in relation to a product protected by the patent after that product has been brought on to the market in any country by the owner of the patent, or by another person who has obtained his consent or is economically associated with him.

Art. 54, Andean Decision No. 486.

The patent shall not extend to the biological material obtained by reproduction, multiplication or propagation of the material that has been brought to the market, provided that

• The reproduction, multiplication or propagation was necessary so that the material might be used to achieve the purposes for which it was brought on to the market, and
• That the material derived from such use is not used for multiplication or propagation purposes.

The rights conferred by the patent may not be asserted against a third party who, in good faith, before the priority date or filing date of the application on which the patent was granted, was already using or exploiting the invention or had made real or effective preparations for such use.

The said third party shall have the right to start or continue the use or exploitation of the invention, but that right may only be assigned or transferred together with the establishment or business in which the use or exploitation was taking place.

Transference of Rights:

Both a granted or a pending patent may be transferred by an inter vivos transaction or by succession. Any transfer of a granted patent shall be registered with the competent national office. Failure to register shall cause the transfer to be unenforceable against third parties.

The transfer shall be evidenced in writing for the purposes of registration, and any interested party may seek the registration of a transfer.

Licenses:

Also, the owner of a granted or pending patent may license the working of the invention concerned to one or more third parties. The license shall be registered with the competent national office; otherwise, the license will be unenforceable against third parties. For the purposes of registration, the license shall be evidenced in writing, and, as above, any interested party may apply for the registration of a license.

If there has been a change in the name or address of the owner of the patent in the course of the term of the license contract, the owner of the registration shall inform the competent national office accordingly. If that is not done, any notification effected according to the particulars appearing in the register entre shall be valid.

The competent national authority shall not register license contracts for the working of patents that do not conform to the Common Provisions on the Treatment of Foreign Capital and Trademarks, Patents, Licenses and Royalties (Dec. No. 291/91), or do not conform to Community or national provisions on business practices that restrict free competition.

Obligations:

The owner on the patent must exploit the patented invention in any member country, either directly or through a person authorized by him.

“Exploitation” shall be understood to mean:

• The industrial manufacture of the patented product or
• The full use of the patented process, including:
  • The distribution and marketing of the results thereof, in a manner sufficient to meet the needs of the market.
  • The import of the patented product, including distribution and marketing, where it is done on a scale sufficient to meet the needs of the market.

Where the patent relates to a process that does not result in a product, “marketing” and “distribution” requirements shall not be enforceable.

A European patent application may be filed by any natural or legal person, or any body equivalent to a legal person by virtue of the law governing it. It may also be filed either by joint applicants or by two or more applicants designating different Contracting States.

The right to a European patent shall belong to the inventor or his successor in title.

The topics of concurring inventions and employment relationships are addressed by the European Patent Convention as follows. The topic of “State-funded inventions” is not directly addressed under the Convention, which means that it depends merely on the law applicable under each State.

• Concurring inventions:

If two or more persons have made an invention independently of each other, the right to a European patent therefor shall belong to the person whose European patent application has the earliest date of filing, provided that this first application has been published.

• Employment relationships:

If the inventor is an employee, the right to a European Patent shall be determined in accordance with the law of the State in which the employee is mainly employed; if the State in which the employee is mainly employed cannot be determined, the law to be applied shall be that of the State in which the employer has the place of business to which the employee is attached.

In proceedings before the European Patent Office, the application shall be deemed to be entitled to exercise the right to a European patent.

What happens if a patent application is filed by a person who is not entitled to it?

If by a final decision it is adjudged that a person other than the applicant is entitled to the grant of the European patent, that person may, in accordance with the Implementing Regulations:

• Prosecute the European patent application as his own application in place of the applicant;
• File a new European patent application in respect of the same invention; or
• Request that the European patent application be refused.

Towards the inventor’s paternity right…  The EPC states that, in any case, the inventor shall have the right, vis-à-vis the applicant for or proprietor of a European patent, to be mentioned as such before the European Patent Office.

The right to a patent shall belong to the inventor, and it may be transferred by an inter vivos transaction or by succession. The owner can be a natural person or a legal entity, and a patent can be owned by two or more persons if they have made an invention jointly.

At a first glance, determining who is the owner of a Patent is easy. However, there is a series of situation that may be a little bit more complex, such as concurring inventions, employment relationships and state-funded research. Decision No. 486 has addressed those topics as follows:

• Concurring inventions: this phenomena is also known as multiple discovery, and it refers to an object of protection that has been invented simultaneously and independently by two or more inventors.

Under the Andean Community Regime, if two or more persons have made the same invention independently of each other, the patent shall be granted to the person, or to the successor in title, who files the first application in respect of it or claims the earliest priority.

• Employment relationships:

If the invention occurs in the course of employment relations, the employer, whatever its form and nature, may transfer part of the economic benefits deriving from the inventions to the employee inventor with the view to promoting research activity, without prejudice to the provisions of the national legislation of each member country.

• Inventions and State funds:

The entities that receive State funding for their research shall reinvest part of the royalties received from the marketing of inventions, with the view to accumulating a continuous supply of such funds and stimulating researchers by giving them a share in the proceeds from innovations, in accordance with the legislation of each member country.

Towards the inventor’s paternity right… The inventor shall have the right to be mentioned as such in the patent, and may likewise object to being so mentioned.

Pretty much as in the Andean Community Regime, under the European Patent Convention Patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.

The differences, however, rely on the way that each of those systems define and limit the different concepts surrounding the requirements. The European Union approaches to them as follows:

Novelty:

An invention shall be considered to be new if it does not form part of the state of the art.

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.

Additionally, the content of European patent applications as filed, the dates of filing of which are prior to the filing date of the Application and which were published on or after that date, shall be considered as comprised in the state of the art.

The aforementioned dispositions shall not exclude the patentability of any substance or composition, comprised in the state of the art, for use in a method for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body, provided that its use for any such method is not comprised in the state of the art; neither exclude the patentability of any substance or composition referred to for any specific use in a method for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body, provided, again, that such use is not comprised in the state of the art.

A disclosure of the invention, however, shall not be taken into consideration if it occurred no earlier than six months preceding the filing of the European Patent application and if it was due to, or in consequence of (a) an evident abuse in relation to the applicant or his legal predecessor, or (b) the fact that the applicant or his legal predecessor has displayed the invention at an official, or officially recognized, international exhibition falling within the terms of the Convention on international exhibitions signed at Paris. This has been known as non-prejudicial disclosures, and are considered as exceptions to the lack of novelty exclusively under the European Patent Convention.

For the exception to apply in case (b), the applicant must state, when filing the European application, that the invention has been so displayed, and file a supporting certificate within the time limit and under the conditions laid down in the Implementing Regulations.

As you may notice, the European Patent Convention does not contemplate a grace period. The implications of that omission will be addressed afterwards.

Involve an inventive step:

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 the content of European patent applications as filed, these documents shall not be considered in deciding whether there has been an inventive step.

And are susceptible of industrial application:

An invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture.

Under the European Patent Convention, the following shall not be regarded as inventions:

• Discoveries, scientific theories and mathematical methods;
• Aesthetic creations;
• Schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; and
• Presentations of information.

The aforementioned shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.

Exceptions to patentability:

European patents shall not be granted in respect of:

• Inventions the commercial exploitation of which 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. This provision shall not apply to microbiological processes or the products thereof
• Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced 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

Under the Andean Community Provisions, Patents shall be granted for inventions (goods or processes), provided that they are new, involve an inventive step and are industrially applicable.

Novelty:

Dec. No. 486 establishes that an invention shall be considered new when it is not included in the state of the art. For Dec. 486, “state of art“ comprises everything that has been made available to the public by written or oral description, by use or marketing or by any other means prior to the filing date of the patent application or, where appropriate, the recognized priority date.

The contents of the patent application pending before the competent national office with a filing or priority date earlier than the priority date of the patent application under examination shall likewise be considered part of the state of the art solely for the purpose of determining novelty, provided that the said contents are included in the earlier-dated application where it is published, or where it is declared public after the 18-months period for an application to be declared as so.

Also, the Dec. 486 contemplates a grace period, which establishes that no account shall be taken of any disclosure that occurs during the year prior to the filing date of the application in the member country, or during the year before the priority date if priority has been claimed, provided that such disclosure is attributable to

(i) the inventor or his successor in title;

(ii) the competent national office which, in violation of the provisions applicable, publishes the contents of the patent application filed by the inventor or his successor in title; or

(iii) a third party who has obtained the information directly or indirectly from the inventor or his successor in title.

All of the above, for the purposes of determining patentability.

Involve an inventive step:

An invention involves an inventive step if, for a person in the trade with average skills in the technical field concerned, the said invention is neither obvious nor obviously derived from the state of the art. Other regimes, as the one applicable to the United States, consider a requirement of nonobviousness rather than an “inventive step” requirement, as will be mentioned afterwards.

Are industrially applicable:

An invention is considered industrially applicable when its subject matter may be produced or used in any type of industry.

Industry shall be understood as that involving any productive activity, including services. However, this rule has some exceptions. Under Dec. 486, the following cannot be considered inventions:

• Discoveries
• Scientific theories
• Mathematical methods
• Living beings as encountered in nature
• Biological material existing on nature or which may be isolated (including the genome or germplasm of any natural living being)
• Literary and artistic works or any other work protected by copyright
• Plans, rules and methods for the pursuit of intellectual activities, the playing of games or the conduct of economic and business activities
• Computer programs or software as such
• Methods of presenting information

Additionally, some inventions cannot be protected under the regime . The non-patentable inventions are:

• The inventions whose commercial exploitation has to be prohibited in order to protect law and order or morality on the territory of the member country concerned.
  • The commercial exploitation of an invention shall not be considered contrary to law and order or morality solely owing to the existence of a legal or administrative provision that prohibits or regulates such exploitation.
• The inventions whose commercial exploitation has to be prohibited in order to protect the health or life of persons or animals, or to preserve plants or the environment.
  • The commercial exploitation of an invention shall not be considered contrary to the health or life of persons or animals or liable to prejudice the conservation of plants or the environment solely on account of the existence of a legal or administrative provision that prohibits or regulates such exploitation.
• Plants, animals and essentially biological processes for the production of plants or animals that are not non-biological or microbiological processes.
• Therapeutic or surgical methods for the treatments of human beings or animals, and also diagnostic methods applied to human beings or animals.

Products or processes that are already patented and included in the state of the art (within its aforementioned meaning), may not form the subject matter of a new patent owing to the fact of having a use ascribed to them different from that originally provided for in the first patent.

The research process can lead to all sorts of products, and each one of those may be entitled to protection. Protection, however, does not operate in the same way for all of those products.

Let’s say a researcher, through his/her investigation and work, designs a process to improve the effectiveness of a pill and writes an article for a journal about that process. Even though the products are related and can be protected as Intellectual Property Rights, they have different sorts of protection.

The “Intellectual Property Rights” can be divided in two main categories:

Copyright/Author’s Rights and Related Rights. General Scheme.

Copyright, also known as Author’s Rights (depending on the legislative system and its historical development), refers to the protection of the rights of authors in their literary and artistic works. “Literary and artistic works”, as stated by the Berne Convention for the Protection of Literary and Artistic Works refers to every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression. It can include:

• Books, pamphlets and other writings;
• Lectures, addresses, sermons and other works of the same nature;
• Dramatic or dramatico-musical works;
• Choreographic works and entertainments in dumb show;
• Musical compositions with or without words;
• Cinematographic works (and works expressed by a process analogous to cinematography);
• Works of drawing, painting, architecture, sculpture, engraving and lithography;
• Photographic works (and works expressed by a process analogous to photography);
• Works of applied art;
• Illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science.

Industrial Property Protection. General Scheme.

Industrial Property, on the other hand, protects:

•  Patents,
• Utility Models,
• Industrial Designs,
• Trademarks,
• Service Marks,
• Trade Marks,
• Trade Names,
• Indications of Source or Appellations of Origin, and
• Repression of unfair competition

As stated in the Paris Convention, specifically in its first article. It can be said that its object of protection consists of signs conveying information, in particular to consumers, regarding products and services offered on the market. Protection is directed against unauthorized use of such signs that could mislead consumers, and against misleading practices in general.

When seeking protection for your invention, you should take into account the type of product it is, to determine the correct path to follow. Intellectual Property is a very wide topic, and this blog will be focused mainly on Patent Law.

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!