EBS Law Term 2013 Intellectual Property Law Patent Law: Introduction Prof. Martin Senftleben VU...

EBS Law Term 2013 Intellectual Property Law

Patent Law: Introduction

Prof. Martin SenftlebenVU University Amsterdam

Bird & Bird, The Hague

Intellectual property domains

technology

commerce

culture

patent law

trademark law

copyright law

Contents

• definition

• international treaties

• criteria of protection

• exclusions from patentability

Definition

A patent is an exclusive right in an industrial

invention that is granted upon request

... great inventions:

• penicillin

• transistor

... small inventions:

• post-it stickers

• Lego bricks

International treaties

International

• WIPO: The Paris Convention for the

Protection of Industrial Property

(1886/1967)

• WTO: The Agreement on Trade-Related

Aspects of Intellectual Property Rights

(1994)

• WIPO: The Patent Cooperation Treaty

(PCT, 1970)

Criteria of protection

Art. 27(1) of the TRIPS Agreement

‘...patents shall be available for any

inventions, whether products or

processes, in all fields of technology,

provided that they are

• new,

• involve an inventive step and

• are capable of industrial application.’

Novelty

Subject matter is not new if it belongs to

the state of the art.

... to determine on the basis of the situation at

• the filing date (when applying for a patent for

the first time)

• the priority date (when subsequently filing

patent applications in further countries of the

Paris Union)

Paris Union

filing a patent application in one

country of the Union

12 months

subsequent filings in

other Union countries

Priority right (art. 4 of the Paris Convention)

State of the art

= everything that is made publicly available

• decisive: can a person skilled in the art

carry out the invention on the basis of the

information made available?

• essential: keeping the invention secret

before applying for a patent

(protection of trade secrets via unfair

competition law (see art. 39 TRIPS))

Still new?

• publications in foreign languages

• earlier, not yet published patent applications

• talks, presentations, product proofs

• demonstration to visitors

... (-)

• demonstration at official or officially recognized international exhibitions

... (+) because of temporary protection granted under art. 11 Paris Convention

Inventive step

...when the invention is non-obvious for a

person skilled in the art.

... to determine on the basis of the situation at

• the filing date (first application)

• the priority date (subsequent applications in

countries of the Paris Union)

The person skilled in the art

• artificial, objective standard

• (average) specialist

– has working experience in the relevant field

of technology

– has standard knowledge

– knows the specific, relevant state of the art

In practice

• contents of patent claims

– not new if all elements can be found in one single prior source (mostly earlier patent or earlier patent application);

– not inventive if all elements can be derived from several prior sources, the combination of which is obvious.

• from the perspective of a person skilled in the art, considering that person’s standard knowledge

Industrial application

...when the subject matter can be applied

to any field of industry.

• Industry is to be understood in a broad

sense, including not only ‘industry and

commerce proper’ but also ‘agricultural

and extractive industries’

(art. 1(3) of the Paris

Convention).

The field of industry

‘Industrial property shall be understood in the

broadest sense and shall apply not only to

industry and commerce proper, but likewise to

agricultural and extractive industries and to all

manufactured or natural products, for example,

wines, grain, tobacco leaf, fruit, cattle, minerals,

mineral waters, beer, flowers, and flour.’

(art. 1(3) of the Paris Convention)

Exclusions from patentability


Inventions may be excluded if this is necessary to

• protect the ordre public or morality;

• protect human, animal or plant life or health;

• avoid serious prejudice to the environment.


Members may also exclude

• diagnostic, therapeutic and surgical methods for the treatment of humans or animals;

• plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes.

engine of innovation

ethical questions

developing countries: biodiversity

Discussion on biotech inventions

• US: Diamond vs. Chakrabarty,

447 U.S. 303 (1980)

• lead of the US and Japan over the EU

• EU: Biotech Directive 98/44/EC (1998)

Art. 3 EC Biotech Directive

• ‘... inventions ... shall be patentable even

if they concern a product consisting

of or containing biological material or a

process by means of which biological

material is produced, processed or used.’

• ‘Biological material which is isolated from its

natural environment or produced by means

of a technical process may be the subject of

an invention even if it previously occurred in

nature.’


Patent Law: Acquisition



Contents

• registration procedure

• term of protection

• registration strategies

• portfolio management

Registration procedure

Examination systems

applicationformal

substantivea. novelty

b. further requirements

refusal

grant oppositionexamination

Registration systems

applicationformal

substantivea. novelty

b. further requirements

refusal

grant oppositionexamination

( )

( )

Pros and cons

Examination system

• legal certainty high

• long procedure

• expensive

• settlement of

disputes in the

framework of the

office procedure

Registration system

• legal certainty low

• short procedure

• cheap

• settlement of

disputes in court

proceedings

Term of protection

The term of protection

• ‘The term of protection available shall not

end before the expiration of a period of

twenty years counted from the filing date.’

(art. 33 TRIPS)

• extensions in certain technical fields?

– pharmaceutical products requiring marketing

approval (can take several years)

– supplementary protection certificates in certain

countries (example: EU)

Registration strategies

filing a patent application in one

country of the Union

12 months

subsequent filings in

other Union countries

Starting point: priority right (art. 4 PC)

national registrations

regional: European Patent Convention (EPC)

bundle of rights having the same effect as national

patents

Different routes of registration

Patent Cooperation Treaty (PCT): international registration

http://www.epo.org/index.html

International route: Patent Cooperation Treaty

Local patent application followed within 12 months by multiple foreign applications claiming priority under Paris Convention:

- multiple formality requirements

- multiple searches

- multiple publications

- multiple examinations and prosecutions of applications

- translations and national fees required at 12 months

Some rationalization because of regional arrangements: ARIPO, EAPO, EPO, OAPI

0 12

Fileapplication

locally

Fileapplications

abroad

(months)

Starting point: traditional system

(months)

File PCTapplication

120 30

International search report

& written opinion

16 18

Internationalpublication

(optional)File

demand forInternational preliminary examination

File localapplication

Enternationalphase

22 28

(optional)International preliminary report on

patentability

Typically a national patent application in the home country of

the applicant

What is the PCT?

Overview PCT system

(months)

File PCTapplication

120 30


& written opinion

16 18


(optional)File

demand forinternational preliminary examination


Enternationalphase

22 28


patentabilityTypically filed in same

national patent office--one set of fees, one language,

one set of formality requirements--and legal effect in all PCT States:

effect international application = national

patent application

What is the PCT?

Overview PCT system

(months)

File PCTapplication

120 30


& written opinion

16 18


(optional)File



Enternationalphase

22 28


patentability

Report on state of the art (prior art documents and their relevance) + initial, non-binding patentability

opinion:

applicant can evaluate the application

What is the PCT?

Overview PCT system

(months)

File PCTapplication

120 30


& written opinion

16 18


(optional)File



Enternationalphase

22 28


patentability

Disclosing to world content of application in standardized way

What is the PCT?

Overview PCT system

(months)

File PCTapplication

120 30


& written opinion

16 18


(optional)File



Enternationalphase

22 28


patentability

Request an additional patentability analysis on basis

of amended application

What is the PCT?

Overview PCT system

(months)

File PCTapplication

120 30


& written opinion

16 18


(optional)File



Enternationalphase

22 28


patentability

Additional patentability analysis, designed to assist in national phase decision-

making:

again a preliminary, non-binding opinion

What is the PCT?

Overview PCT system

(months)

File PCTapplication

120 30


& written opinion

16 18


(optional)File



Enternationalphase

22 28


patentability

Express intention and take steps to pursue to grant in

various states

What is the PCT?

Overview PCT system

Fees for:

--translations--Office fees--local agents

0 12

File local application

Fileapplications

abroad(months)

Traditional

(months)

File PCTapplication

12 30

International search report & written opinion

16 18


(optional)File



Enternationalphase

22 28


patentability

PCT

0

Fees for:

--translations--Office fees--local agents

Why use the PCT?

Comparison of the systems

Success of the PCT system

• more time for decision making:

30 instead of 12 months

• PCT form accepted by any Contracting

Party = no rejection on formal grounds

• evaluation and amendment of the

invention prior to national phase

• major costs of filing in different countries

are postponed


Patent Law: Protection



Contents

• exclusive rights

• exceptions

• other use without authorization

Exclusive rights


‘A patent shall confer on its owner the

following exclusive rights:

a.where the subject matter of a patent is a

product, to prevent third parties […] from

the acts of: making, using, offering for

sale, selling, or importing for these

purposes that product;…’


b.where the subject matter of a patent is a

process, to prevent third parties […] from

the act of using the process, and from the

acts of: using, offering for sale, selling, or

importing for these purposes at least the

product obtained directly by that process.’

Problem 1: identical product may be obtained with a different process

process A

process D

process B

process C


‘…if the subject matter of a patent is a process

for obtaining a product, the judicial authorities

shall have the authority to order the defendant

to prove that the process to obtain an identical

product is different from the patented process.

Therefore, Members shall provide, in at least

one of the following circumstances, that any

identical product when produced without the

consent of the patent owner shall, in the

absence of proof to the contrary,…’


‘…be deemed to have been obtained by

the patented process:

a. if the product obtained by the patented

process is new;

b. if there is a substantial likelihood that the

identical product was made by the process

and the owner of the patent has been unable

through reasonable efforts to determine the

process actually used.’


‘In the adduction of proof to the contrary,

the legitimate interests of defendants in

protecting their manufacturing and

business secrets shall be taken into

account.’

Problem 2: further products may be required to obtain the final product

father mother son final

production of compact discs

A is holder of a UK

process patent for the

production of ‘father’ discs

at a particular pressure.

He wants to prevent B

from importing final discs.

B uses the patented

process in China to obtain

father discs and carry out

the further production

steps. He offers the final

discs in the UK.

Process patent infringement? (UK: Pioneer Electronics vs. Warner Music)

father mother son final

production of compact discs


b.where the subject matter of a patent is a

process, to prevent third parties […] from the

act of using the process, and from the acts

of: using, offering for sale, selling, or

importing for these purposes at least the

product obtained directly by that process.’

• answer depends on national interpretation of

‘obtaining directly’

Exceptions

Art. 30 of the TRIPS Agreement

‘Members may provide for limited exceptions

to the exclusive rights conferred by a patent,

provided that such exceptions do not

unreasonably conflict with a normal

exploitation of the patent and do not

unreasonably prejudice the legitimate

interests of the patent owner, taking account

of the legitimate interests of third parties.’

expiry

generic version

protected medicine

• exempts use of the patented invention for

tests necessary to obtain marketing

approval for pharmaceutical products

• US: Roche Products vs. Bolar Pharma

Example: ‘Bolar’ exception

Example: experimental use

‘The rights conferred by a Community Patent shall not extend to: [...] acts done for experimental purposes relating to the subject-matter of the patented invention.’ (art. 27(b) Community Patent Convention)

• testing claimed properties or different indications (+)

• ...insofar as the experiments are directed to the substance itself

• use for commercial research?

Other use without authorization

Art. 31 of the TRIPS Agreement

• problem of compulsory licenses

• detailed list of requirements, such as

– efforts to obtain regular authorization

– national emergency

– limited scope and duration according to purpose

– non-exclusive, non-assignable

– predominantly for the domestic market

– payment of adequate remuneration

– judicial review

Problem: flexible enough for sufficient access to medicine?

• ‘national

emergency’?

• ‘predominantly

for the

domestic

market’?

Art. 31(l) of the TRIPS Agreement

• problem of later patents involving an important

technical advance of considerable economic

significance in relation to the prior invention

• specific requirements

– cross-license on reasonable terms for the owner of

the first patent

– use authorization with regard to the first patent is

non-assignable except with the assignment of the

second patent

Problem: flexible enough for markets with small, incremental innovative steps?

• ‘important

technical

advance’?

• ‘considerable

economic

significance’?

The end.

contact: [email protected]

ANNEX: Interpretation of

Patent Claims

Interpretation of Patent Claims

• central elements of a patent application:

– claims

– description, drawings

• different approaches to interpretation:

– literal (wording of the claims)

– teleological (core of the inventive idea)

• additional consideration: equivalents

the same function

in the same way with

the same results

Equivalents

doctrine (+)

no need to specify

each and every

variant of the

invention in the

specification

doctrine (-)

more detailed

claims advisable to

close potential

loopholes for

competitors

Impact in practice

Different approaches in countries of the European Patent Convention

• ‘Epilady’ saga (1990-1993)

• plaintiff

– holds patent rights to ‘Epilady’, a gadget for

removing body hair with a coiled spring

• defendant

– applies same inventive idea

– but: uses a rubber tube instead of the coiled

spring

• DE and NL: infringement (+)

• UK: infringement (-)

UK approach: three questions

• variant having material effect upon the way

the invention works?

– if yes, infringement (-)

• if no: absence of material effect obvious at

the date of patent publication?

– if no, infringement (-)

• if yes: claim indicating that strict compliance

with the primary meaning of the terms

essential to the invention?

– if yes, infringement (-)

UK approach: three questions

• inherent problem: last question takes the

court back to interpretation

• critique led to departure from the test

– Kirin-Amgen vs. Hoechst Marion Roussel,

[2005] RPC (9), 169

– no mechanical application, in particular less

helpful in case of complex chemical or

biotechnological inventions

– example: claim to a whole group of chemical

compounds expected to have similar

characteristics

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