an introduction to the current patent system · an introduction to the current patent system centro...

Dragotti & Associati www.dragotti.com20121 Milano – Via Marina, 6 [email protected] Treviso – Via Paris Bordone, 9 [email protected]

An introduction to the current patentsystem

Centro Congressi Environment Park 26 Settembre 2014

Roberto Pistolesi

Dragotti & Associati20121 Milano - Via Nino Bixio, 731100 Treviso – Via Paris Bordone, 9

The origins

� “Parte Veneziana”: March 19, 1474� Chadaun che fara in questa cita algun nuovo et

ingegnoso artificio, non facto perauanti nel dominionostro, reducto chel sara a perfection, sicchè il sepossi usar et exercitar, sia tegnido a darlo in nota alofficio di nostri Prouededori de Comun.

� Siano prohibido a chadaun altro in alguna terra etluogo nostro, far alcun altro artificio, ad Immagine etsimilitudine di quello, senza consentimento etlicentia del auctor, fino ad anni X.

2www.dragotti.com@Dragotti_IP

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� The patent is a contract between the inventor and thesociety.

� The inventor provides the society with a valuabletechnical teaching (i.e. how to solve a given technicalproblem) and is rewarded with a 20-year monopoly.

� The patent monoply, however, is not an authorizationto exploit the invention (i.e. the technical teaching).

� It is only an authorization to prevent third parties fromexploiting the invention.

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Practical example

� The invention is that glucose + aspartame is betterthan glucose or aspartame

� Company A gets a patent on glucose + aspartame� But company B already has a patent on glucose� A cannot use glucose + aspartame until B’s patent on

glucose expires� But B cannot use glucose + aspartame until A’s patent

expires− Importance of FTO opinion


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� The patent is a national monopoly and is subjected tonational laws (although several international treatiesexist)

� If you want to have a patent monoply in China, USA,Germany, France and Italy, you have to file patentapplications in those states

� If you file in China, USA, Germany and Italy only, youcannot get a monopoly in France at a later stage− 18 months from 1st filing− Priority claim


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Renewal fees

� The standard term of a patent is 20 years as fromthe date of filing.

� Renewal fees must be paid to maintain a grantedpatent in force.

� But may also due for pending applications (EPO).− Normally due annually.− In the USA due 3½, 7½ and 11½ years after

grant.� The amount of the fees increases with the age of the

patent


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European Patent Convention

� The EPC is a multilateral treaty providing anautonomous legal system according to whichEuropean patents are granted.

� The EPC has established a single procedure forthe grant of patents on the basis of a singleapplication and created a uniform body ofsubstantive patent law designed to provideeasier, cheaper and stronger protection forinventions in the contracting states.


European Patent Convention

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


European Patent Convention: Art. 64

� In each contracting state for which it is granted, aEuropean patent gives its proprietor the same rightsas would be conferred by a national patent grantedin that state.

� If its subject-matter is a process, protection isextended to products directly obtained by thatprocess.

� Any infringement of a European patent is dealt withby national law.


London Agreement

� In France, Germany, Luxembourg, Monaco,Switzerland/Liechtenstein and the United Kingdom,no translation of the specification of the Europeanpatent needs to be supplied.

� The European patent automatically confers on itsproprietor from the date the mention of its grant ispublished in the European Patent Bulletin, the samerights as would be conferred by a national patentgranted in that state.


London Agreement

� Austria, Belgium, Bulgaria, Cyprus, the CzechRepublic, Estonia, Finland, Greece, Hungary,Ireland, Italy, Malta, Norway, Poland, Portugal,Romania, Slovakia, Spain and Turkey require atranslation of the complete European patentspecification if the European patent has not beengranted in one of their official languages.


London Agreement

� Latvia, Lithuania and Slovenia require a translationof the claims only.

� Croatia, Denmark, Iceland, the Netherlands andSweden also require a translation of the claimsonly unless the European patent has beengranted in English, or - in case the patent hasbeen granted in French or German - if an Englishtranslation is supplied.


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Requirements – Art. 78 EPC

A European patent application shall contain:(a) a request for the grant of a European patent;(b) a description of the invention;(c) one or more claims;(d) any drawings referred to in the description or the

claims;(e) an abstract.


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Publication – Art. 93 EPC

1) The European Patent Office shall publish theEuropean patent application as soon as possible

(a) after the expiry of a period of eighteen months fromthe date of filing or, if priority has been claimed, fromthe date of priority, or

(b) at the request of the applicant, before the expiry ofthat period.


Provisional protection - Art. 67(1) EPC

� A European patent application shall, from the dateof its publication, provisionally confer upon theapplicant the protection provided for by Article 64, inthe Contracting States designated in the application.


Provisional protection - Art. 69(2) EPC

� For the period up to grant of the European patent, theextent of the protection conferred by the Europeanpatent application shall be determined by the claimscontained in the application as published.

� However, the European patent as granted or asamended in opposition, limitation or revocationproceedings shall determine retroactively the protectionconferred by the application, in so far as such protectionis not thereby extended.


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Sufficiency of disclosure – Art. 83 EPC

� The European patent application shall disclose theinvention in a manner sufficiently clear and completefor it to be carried out by a person skilled in the art.− Filing or not filing?− Regime of secrecy

−Secrecy may be lost−Competitors may arrive at the same invention

and get a patent on it−Prior user rights


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Clarity – Art. 84 EPC

� The claims shall define the matter for whichprotection is sought. They shall be clear andconcise and be supported by the description.

� Attention is required whenever the word about orsimilar terms such as approximately or substantiallyare used. Such a word may be applied to aparticular value (e.g. about 200�C), to a range (e.g.about x to about y) or to a structural unit of anapparatus (e.g. a plate with a substantially circularcircumference).

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Types of claims

� There are only two basic kinds of claim: claimsto a physical entity (product, apparatus) andclaims to an activity (process, use).

� The first basic kind of claim includes asubstance or composition (e.g. chemicalcompound or a mixture of compounds) as wellas any physical entity (e.g. object, article,apparatus, machine) which is produced by aperson's technical skill.


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Product-by-process claims

� A claim defining a product in terms of a process is tobe construed as a claim to the product as such. Theclaim may for instance take the form "Product Xobtainable by process Y".

� These claims are normally allowed when the productcannot be defined in a better way.


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Novelty – Art. 54 EPC

(1) An invention shall be considered to be new if itdoes not form part of the state of the art.

(2) The state of the art shall be held to compriseeverything made available to the public by means ofa written or oral description, by use, or in any otherway, before the date of filing of the European patentapplication.


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Novelty – Art. 54 EPC

(3) Additionally, the content of European patentapplications as filed, the dates of filing of which areprior to the date referred to in paragraph 2 andwhich were published on or after that date, shall beconsidered as comprised in the state of the art.


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Inventive step – Art. 56 EPC

� An invention shall be considered as involving aninventive step if, having regard to the state of theart, it is not obvious to a person skilled in the art. Ifthe state of the art also includes documents withinthe meaning of Art. 54(3), these documents shall notbe considered in deciding whether there has beenan inventive step.


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Paris Convention

� On the basis of a 1st application filed in a contractingState, the applicant may, within 12 months, apply forprotection in any of the other contracting States;these later applications will be regarded as if theyhad been filed on the same day as the 1st application.

� These later applications will have priority overapplications which may have been filed during saidperiod of time by other persons for the sameinvention.


Procedure before the EPO

� The EP grant procedure is an examinationprocedure beginning with a formalities examinationand a mandatory search.

� The first stage ends with the publication of theEuropean patent application and the search report.

� At the applicant's request this is followed by thesecond stage, substantive examination.

� After the patent has been granted, there may be afurther procedure in the form of oppositionproceedings or, upon request of the patentee,limitation or revocation proceedings.



� The first stage of the procedure comprises anexamination on filing, formalities examination,preparation of the European search report and apreliminary opinion on patentability, and publicationof the application and the search report.

� Responsibility for this stage rests with the ReceivingSection and a search division.



� The second stage comprises substantiveexamination and grant. Examining divisions aremade up of three technically qualified examiners,who may if necessary be joined by a legally qualifiedexaminer.

� Until a decision has to be taken on the application,its examination is as a rule entrusted to one of thetechnically qualified examiners. This examiner isresponsible for issuing the requisite communicationsand for discussing the application with the applicantin writing, in person or on the telephone.



� If oral proceedings are requested by the applicant orarranged at the EPO’s initiative, they are held beforethe full examining division.

� Personal or phone interview with the examiner mayalso be requested.

� The final decision on the grant of the patent orrefusal of the application is also a matter for the fullexamining division.


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Amendments – Art. 123 EPC

(2) The European patent application or Europeanpatent may not be amended in such a way that itcontains subject-matter which extends beyond thecontent of the application as filed.

(3) The European patent may not be amended in sucha way as to extend the protection it confers.


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Duty to disclose: EPO

� An applicant claiming priority of a previousapplication has to file a copy of the results of anysearch carried out by the authority with which theprevious application was filed together with theEuropean patent application.

� Where multiple priorities are claimed, the applicanthas to file copies of the search results drawn up inrespect of all previous applications concerned.

� If not yet available, to be filed asap (or declaration).� Otherwise application may be rejected.


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Duty to disclose: USA

� Failure of a person who is involved in thepreparation or prosecution of a US patentapplication to disclose any information which ismaterial to the patentability of a claim can resultin the patent being held unenforceable forinequitable conduct.

� Material information:− prior art− experimental test


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PCT (Patent Cooperation Treaty)

� The PCT makes it possible to seek patent protectionfor an invention simultaneously in each of a largenumber of countries by filing an "international"patent application.

� Such an application may be filed by anyone who is anational or resident of a Contracting State.

� It may generally be filed with the national patentoffice of the Contracting State of which the applicantis a national or resident or with the WIPO in Geneva.

� Subjected to search report and written opinion.� IPER may be requested.


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PCT

� National phases to be filed within 30/31 monthsafter the filing/priority date.

� The applicant has up to 18/19 months more thanhe has in a procedure outside the PCT to reflecton the desirability of seeking protection inforeign countries, to appoint local patent agents,to prepare the necessary translations and to paythe national fees.


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Enforcement of patent rights

� Patents are important assets of a company and aretherefore valuable per se, even if they are notactually enforced against someone.

� However, the value of a patent portfolio alsodepends on the possibility of its actual andsuccessful enforcement.

� The claims of a patent must be valid and clear: thata patent has been granted does not mean that it isvalid and enforceable.


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� The validity of a patent can always be challenged.� This can normally be done before the competent

national courts.− USA/Germany

� Under certain circumstances, it can also be donebefore the national or regional patent offices:− EPO: opposition procedure (within 9 months from

the grant of the patent)− USPTO: reexamination (at any time)


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Infringement

� Literal� Under the doctrine of equivalents

− whenever an accused product or process fallsoutside the literal language of the claims but isequivalent to and differs only unsubstantially fromthe claimed invention;

− infringement under the DoE can be found when theaccused product performs substantially the samefunction in substantially the same way to obtainsubstantially the same result;

− prosecution estoppel doctrine.


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Actions on the merit

� Stopping the infringement� Collecting damages

− punitive damages−Importance of FTO

� Restraining order− penalty

� Seizure or destruction of infringing goods� Apportionment of litigation costs� Publication


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Preliminary injunctions

� Widely used in patent litigations also as aremedy to their length

� Prerequisites:− irreparable damage (periculum in mora);− case favourable to the petitioner (fumus boni

iuris).� judicial description (descrizione)� seizure� cease and desist injunction (inibitoria)


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Thank you!


an introduction to the current patent system · an introduction to the current patent system centro...

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