Effect of patent protection Substantive requirements for patent protection Procedural requirements for patent protection Form and interpretation of patents Right to Exclude Patent is a right to exclude ID: 650990
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Slide1
Patent LawOverviewSlide2
OutlineEffect of patent protection
Substantive requirements for patent protection
Procedural requirements for patent protection
Form and interpretation of patentsSlide3
Right to ExcludePatent is a right to exclude
Not a right to practice
The wording of the Act is ambiguous, but the principle is perfectly clear
You may patent a weapon, but this does not give you the right to use it
Also GM crops, cloning, etc.
A patent may be granted for an improvement to a patented invention
Result is “blocking patents”Slide4
True MonopolyS.42 Exclusive right
“of making, constructing and using the invention and selling it to others to be used”
Independent creation is
not a
defence
Contrast with copyrightSlide5
ProcedureRegistration
Patents are registered and publically searchable
Examination
A patent must be applied for and specifically granted after examination
Contrast copyright where protection is automaticSlide6
ApplicationThe issued patent is the application
The patentee (or the agent) writes the patent
The patent application must be examined by patent office before it will be issuedSlide7
ExaminationOn examination the patent office will often make objections
E
g
the patent is broader than the invention,
T
he disclosure is not sufficient
The patent agent will answer these objection, often by modifying the patent
This is known as “patent prosecution”Slide8
ExaminationExamination is
not automatic
A patent is examined only after request and payment of a fee
If the patent is never examined, it will never issue
Note: examination
is automatic in the USSlide9
Application Laid OpenWhether or not a request is made, the patent will be made public (”laid open”) 18 months after it is filed
Note: patent applications were traditionally kept secret in the US and still may be if the applicant certifies that she is not seeking any foreign patentSlide10
ExaminationAdvantages of deferred examination
Save costs by avoiding the expense of examining applications which would otherwise be abandoned
Allows CIPO to rely on prior examination by US/EPO
Why file if you do not intend to request examination?
Filing establishes priority under “first to file”
Novelty is decided as of the filing date
Allows a chance to see whether the invention is worth pursuing
Why doesn’t the US have deferred examination?Slide11
International Patent ApplicationPatents, like copyright, are national
Though the EU is moving towards a single EU patent
Patent Cooperation Treaty
Not an international patent
Establishes a procedure for making simultaneous applications in multiple jurisdictions
European Patent Convention
Single procedure for
grant of a European patent
Results in a bundle of national patents
Post-grant – infringement, validity, scope – is determined by national lawSlide12
Term20 years from
filing
Problem: Office delay affects issuance date
(Old system – 17 years from issue)
Problem: “submarine” patents
Contrast with much longer copyright termSlide13
Substantive RequirementsSufficiency (disclosure)
Invention
Utility
Novelty
Non-obviousness
Subject matterSlide14
InventionUtility
Output
How much benefit to society?
Novelty & Non-Obviousness
Input
How much technical difficulty?Slide15
Novelty & Non-ObviousnessMonopoly are generally undesirable
Do not grant unless necessary to call forth the invention
No playing card patentsSlide16
Novelty & Non-ObviousnessHow difficult was it to come up with the device?
Novelty
Minimal hurdle
Less stringent than non-obviousness
Much easier to assess
Non-Obviousness
Did the invention require the lure of a patent?
High hurdle, in principle
Often very difficult to assessSlide17
UtilityHow much benefit to society?
Utility hurdle is low
The invention must work as described
No need to show commercial value
Why not?
Why not have a high utility threshold?
If the goal of patents is to benefit society, why not grant patents only for patents that do in fact benefit society?Slide18
InvalidityValidity is an issue both
During examination
and
During an infringement action
A defendant will argue
My product does not infringe your patent, and
If it does, your patent is invalid
59. The defendant, in any action for infringement of a patent may plead as matter of
defence
any fact or default which by this Act or by law renders the patent void, and the court shall take cognizance of that pleading and of the relevant facts and decide accordingly.Slide19
Form and InterpretationConstruction & Infringement
The alleged infringing device is not compared with the patentee’s device – it is compared with the
patent
The
construction of the patent is therefore crucial to the issue of infringementSlide20
RemediesInjunction is routine after finding of infringement
But see
eBay Inc. v.
MercExchange
, L.L.C., 126 S. Ct. 1837 (U.S. 2006)
Damages post-grant
Reasonable compensation for pre-grant “infringement”
Accounting of Profits
Interlocutory injunction