PROTECTING INVENTIONS

in the international environment

Eytan Jaffe – Israeli Patent Attorney

– 1st Basic condition for obtaining a patent

NOVELTY

Article 52(1) EPC:

European patents shall be granted for any inventions which are … new

35 U.S.C. 102 (a)

A person shall be entitled to a patent unless … the invention was known …Article 54(1) EPC:

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

Article 54(2) EPC:

The state of the art shall be … everything made available to the public by means of a written or oral description, by use, or in any other way …

According to European case law information is “available to the public” also if only a single member of the public can gain access to it, and if there is no obligation to maintain secrecy (e.g. T1081/01)obligation to maintain secrecy

NOVELTY1st Basic condition for obtaining a patent

INVENTIVE STEP2nd Basic condition for obtaining a patent

In the KSR decision, the US supreme court adopted a broad and flexible approach of “common sense” for combining prior art publications

Art 56 EPC

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.

WHAT CAN BE PATENTED ?

• Machines

• Articles of manufacture

• Compositions of matter (e.g. chemical compositions)

• Processes (i.e. methods)

WHAT CANNOT BE PATENTED ?

• Laws of nature (e.g. E = MC²)

• Physical phenomena (e.g. new mineral)

• Abstract mental ideas and processes (e.g. algorithms)

PATENT

Provides an exclusive right granted by a state to prevent others from selling, making or using the patented invention

Does not give the proprietor of the patent the right to use the patented invention !!!

The word patent originates from Latin and means "to lay open" (i.e. make available for public inspection)

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Priority dateJan 1 200Jan 1 200

Patent pending

Search Search & &

ExamExam

1 - 2 years (in US)

Patent grantedPatent granted

Patent rejectedPatent rejected

)in US( ~1 year

Patent in force

18 month publicationPatent publication

20 years

Intellectual Property (IP)

a general term for “products” that result from creations of the mind

Trade markTrade markDesignDesign CopyrightCopyrightPatentPatent……

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DesignDesign? ?

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Trade markTrade mark? ?

Patent for productPatent for product? ?

Patent for processPatent for process? ?

Public display

File Patent application

File Design

(US EP)...

File Trademark

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First opening

Liner

Jan 1 Jan 1 20002000

Jan 1 Jan 1 20012001

PCTJul 1 Jul 1 20022002

Paris convention

Where to file first if US is important market for you ?

Jul 1 2001

18 month publication

I file an app. in I file an app. in Lithuania that Lithuania that

describesdescribes embodiment `B`embodiment `B`

35 U.S.C. 102)a(

A person shall be entitled to a patent unless the invention was … described in a printed publication … before the invention thereof by the applicant for patent

Competing app. Competing app. filed in US filed in US claimsclaims embodiment `B`embodiment `B`

Aug 1 Aug 1 20012001

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Between:Between:Jan 1 2000 & Jan 1 2000 & Jan 1 2001Jan 1 2001

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Competing app. Competing app. filed in US filed in US claimsclaims embodiment `B`embodiment `B`

35 U.S.C. 102)e(

A person shall be entitled to a patent unless the invention was described in … an application for patent … filed in the United States before the invention by the applicant for patent

Where to file?

PriorityPriority

filingfiling

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2.52.5yyParis convention

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PriorityPriorityfilingfiling

Where I sell or manufacture

Where I want to litigate

Spain

France

Germany

German courts hear more patent infringement cases than those of any other European country.

The District Court of Düsseldorf, in particular, has an excellent reputation internationally for its expertise and the quality and predictability of its decisions.

EuropeEurope AustraliaAustralia

IsraelIsrael USAUSA

00Search Search

& & ExamExam

Patent grantedPatent granted

Patent rejectedPatent rejected

“The Patent system is designed to ensure the best possible quality of examination; however it has its limitations.

The founders of the patent system have therefore instituted procedures that are aimed to improve the system.

When market forces are of an opinion that there is room to re-consider the grant of a patent then the required resources will be invested to oppose the patent, and from that time the patent will be examined in a more detailed manner …”

(recent decision of the Israeli patent registrar)

Catalogue published during 2001

Patent:Filed in 2002, andGranted in 2007

• 3rd party observation

• opposition• 3rd Party Submissions

• Protest

• Re-exam

• Opposition

• Re-exam

AU

EP

US

FILEFILEInvention A

FILEFILEInvention A

PatentPatent

First to file system (in most countries)

First to invent system (in US)

Conception of invention A

Two inventors file applications for the same invention ?

What happens when . . .

PatentPatent

laboratory notebook is essential evidence of the date of conception !!!

• Use a book with permanently bound pages !• Spiral or comb bound books are not suitable for use in court !• Make all entries in ink !

time

Conception of invention A

• In 1874, telegraph message traffic was rapidly expanding

• A need emerged to transmit several messages on a single line

• Western Union contracted several inventors to find a solution

• Bell, a teacher of deaf pupils, was also experimenting in this field

THE RACE TO THE PATENT OFFICE

Elisha GrayAlexander Graham Bell

• With support of wealthy patrons Bell accelerated his experiments

Both Bell & Gray were successful in their experiments

The story of the invention of the Telephone

• The inventor Elisha Gray was one of these inventors

Both filed applications on the same day: 14 February 1876

Popular belief is that Bell filed several hours earlier

Gray applicationBell application

Gray abandoned his patent application which allowed Bell to get the patent

THANK YOU