Are you lost in a jungle of invention protection terminology? Our glossary will help you seize it.
Are you lost in a jungle of invention protection terminology? Our glossary will help you seize it.
A patent is an exclusive right granted by a sovereign state to an inventor or assignee for a limited period. Patent owners have the right to prevent others from making, using, offering for sale, selling or importing a product that infringes their patent, for a limited amount of time. The right to exclude is for a certain term, i.e. 20 years from the date of filing of the patent application, if the patentee keeps the patent in force by paying the annual fees. Since the patented product, device, method or use may be dependent on third party right, it is advisable to perform a Freedom to Operate analysis before commercial utilization of the patent.
Initially, applying for and granting a patent was quite practically motivated: by publishing the invention, the inventor gets the right to forbid others from exploiting the invention for commercial purposes. Accordingly, when the patented inventions are published, the details of the invention are available for the public, although only exploitable by the patentee for a number of years. When the patent right expires, the invention can be freely used as disclosed in the patent. Patents stimulate product development which in turn benefits the surrounding society. Similar exclusive rights are provided by utility models, design protection, and trademarks. Sometimes, however, it pays to keep the invention a trade secret.
It is common for the patent examiner to be of the opinion that the patent application is not acceptable in the form filed with the patent office. If the applicant feels that the examiner’s decision is illegitimate, the applicant can give the patent office counter argumentation. If the applicant disagrees with the examiner’s decision, the claims can be amended to render the invention patentable. Although the claims can be amended, the amendment must be supported by the application as originally filed. The better the state of art is known before the patent application is drafted, the smaller the number of unpleasant surprises encountered during patent prosecution. Such unpleasant surprises are best avoided by performing a novelty search prior to filing the patent application. Drafting a high quality patent application and taking care of the patent proceedings requires professional competence.
A patent is in force only in the country in which it was granted. Accordingly, any invention must be protected separately in different countries. A Finnish patent application must be filed with the Finnish Patent and Registration Office. Foreign patent applications can be filed either at foreign patent offices or by using different regional patenting systems such as European patents. By filing an international patent application, i.e. a PCT application, protection can be sought in several countries simultaneously. However, there are no international patents, and thus, a single patent does not grant the patentee an exclusive right to utilize the invention commercially worldwide.
Foreign patent applications do not need to be filed on the same day as the Finnish patent application, but it is advisable to file the foreign patent application within a year from the filing of the first patent application. That allows the applicant to claim priority for the foreign patent applications from the earlier patent application.
A patent is applied for by filing a patent application with a patent authority. To facilitate the applicant’s position, the Patent Cooperation Treaty was concluded. It allows the initiation of the patenting process in over 140 countries by filing a single patent application with a single patent authority. European patents can be applied for at the European Patent Office for 42 countries (all EU member states and several non-EU countries). The European Patent Office takes care of the patent prosecution, granting, and possible oppositions and appeals lodged against the granted patents. When a European patent is granted, it must be validated in the European Patent Convention contracting states in which the patent is to be enforced.
In 2018 at the earliest, a unitary patent (a European patent with unitary effect) will be available as an alternative to the European patent. The Eurasian Patent Office grants patents to nine CIS states, while in Africa, there are two regional patent systems, ARIPO and OAPI.
Similarly to a patent, a utility model is an exclusive right for the holder to commercially utilize the invention. Utility models allow the invention to be protected quickly since the patent office only examines the utility model application as to formalities prior to registration. A utility model may be granted for a technical solution that can be used industrially. Chemical compounds, food substances and medicinal products and inventions related to microbiology can also be protected with utility model rights, whereas method or use inventions cannot. In Finland, the protection period is ten years. It should be noted, however, that laws related to utility model protection do not exist in all countries. For example, Sweden, Great Britain, and the USA have no legislation related to utility models. An invention can be protected with a utility model registration in Finland, Denmark, Germany, France, Italy, Japan, China, Taiwan, and Korea, among others. It should also be noted that the laws governing utility models are not harmonized: in Finland, the requirement for inventive step is lower for utility models than for patents, while in Germany the inventive step requirement for utility models is as high as the one for patents. Thus, when planning to use a utility model in infringement proceedings, its validity needs to be established in advance.
A design (design patent) is the most important judicial tool for protecting industrial designs. The design is protected by registration which verifies the designer’s exclusive rights to the products designed. The design protects the appearance of the design against copying. A registered European Community design (RCD) can be renewed in five-year periods for a total of 25 years. An unregistered European Community design (UCD) is in force three years from the date the design was made public within the European Union. The UCD cannot be renewed. In Europe, registering a design is a quick process provided that the drawings comply with the rules of the European Intellectual Property Office (EUIPO). Patents issued from design applications filed on or after May 13, 2015, shall be granted for the term of fifteen years from the date of grant. Patents issued from design applications filed before May 13, 2015, shall be granted for the term of fourteen years from the date of grant.
A trademark is a sign that distinguishes the goods and services produced by a company from similar goods and services of other companies. A trademark functions as a kind of distinctive symbol on the market. A trademark gives the owner the right to prohibit others from using the same mark or a confusingly similar mark for selling and marketing goods or services that are similar to the owner’s goods or services. A trademark may be e.g. a word, figure, slogan, sound, or a combination thereof. The shape of a product or of its packaging can also function as a trademark.
A grace period is a period of time during which the invention may have been publicized by the inventor, designer, or holder of rights to the invention, without the disclosure being considered a novelty bar for the patent or design application, typically provided that the disclosure took place within 12 months from the filing date of the application. Since not all countries provide for a grace period in their legislation, it is advisable to file patent and design applications before any publicizing. Otherwise the disclosure may constitute an obstacle for granting protection in countries where no grace period is provided for. The design legislations of some countries including Finland, European Community operate a 12-month grace period. A list comprising grace period related legislation in different countries is available at http://www.wipo.int/export/sites/www/scp/en/national_laws/grace_period.pdf.
In patent, utility model, industrial design right and trademark laws, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design, or a trademark respectively. The priority right allows the claimant to file a subsequent application in another country for the same invention, design, or trademark, effective as of the date of filing of the first application. When filing the subsequent application, the applicant must claim the priority of the first application in order to make use of the right of priority. The right of priority belongs to the applicant or his successor in title.
The period of priority, i.e. the period during which the priority right exists, is usually 6 months for industrial designs and trademarks and 12 months for patents and utility models. The period of priority is often referred to as the priority year for patents and utility models.
In patent law, when a priority is validly claimed, the date of filing of the first application, called the priority date, is considered to be the effective date of filing for the examination of novelty and inventive step or non-obviousness for the subsequent application claiming the priority of the first application. In other words, the prior art which is taken into account for examining the novelty and inventive step or non-obviousness of the invention claimed in the subsequent application would not be everything made available to the public before the filing date (of the subsequent application) but everything made available to the public before the priority date, i.e. the date of filing of the first application.
Inventive step means that the invention must differ substantially from what is known before the filing date or priority date of the patent application. The difference cannot be so small that it is obvious for a skilled person working in the technical field of the invention. During patent prosecution, the patent examiner first determines whether the invention as claimed by each patent claim is novel. If the invention as claimed is novel, the examiner continues to determine whether the invention as claimed differs substantially from the state of art. According to European patent practice, the examiner first defines the closest prior art, i.e., in practice, a publication that is as close as possible to the invention. Then the examiner defines the difference between the claimed invention and the closest prior art document, and formulates the so called objective technical problem which the invention aims to solve. If the solution can be found in another publication published before the filing date (or priority date) of the patent application, and if it would be obvious for the skilled person to combine the teachings of these publications, the invention is not inventive. A European patent examiner typically combines only two publications when assessing the inventive step. In the USA, it is typical that the examiner forms chains of several publications in his obviousness attacks.
Being industrially applicable means that the invention is of a technical nature and solves a technical problem. The patentable subject matter must be a method, a device, a product, or a novel use. A mere idea or theory cannot be patented. In addition, an invention must be disclosed in a patent application such that a skilled person working in the field of the patent application can reduce the invention into practice. The word “industrial” has a broad meaning. In additional to traditional industry it includes sectors such as trading, gardening, and fishing.
The aim of a Freedom to Operate analysis is to confirm that a product, method, use, or a part thereof, does not infringe third party rights in the countries in which the product is sold, manufactured or used.
When performing a Freedom to Operate analysis, the patentee’s product entering the market is compared with granted or pending claims of patents and patent applications that are related to similar products and their manufacturing methods. The Freedom to Operate analysis must be performed separately for each country, since the granted claims of the same invention may differ significantly in different countries.
Novelty means that the invention must be new in view of what has been made public before the patent application is filed. An invention is not novel e.g. when all technical features of a patent claim are present in one publication that has been publicly available before the effective date of the patent application. A novelty bar may comprise, for instance, a scientific publication by the inventors, a conference abstract, or oral disclosure. Although oral disclosure or a public presentation may constitute a novelty bar, typically only written disclosures are cited in patent proceedings. If there are no documents disclosing all technical features of a claim, the invention as claimed is novel. Accordingly, even if a single technical feature is missing from the art, the invention as claimed is novel. If the invention has been disclosed in a publication by the inventors themselves, a patent could be granted in countries where the relevant legislation provides for a grace period.
The aim of a novelty search is to survey the state of the art before filing a patent application at a patent office. The novelty search includes an analysis of the invention and the drafting of a preliminary set of claims. Then database searches are performed in view of the claims. The purpose is to find publications closely related to the invention. If one or more novelty bars are found, the options are either to significantly amend the patent application or to abandon the drafting altogether.
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