The following 20 questions are designed to demonstrate key points about patents (see Top 10 things to know about patents
) in a contextual framework. It is by way of encounters with real-life situations that the facts and theory of patent law and procedures are learned.
These particular questions focus mainly on patent standards and minimum requirements as set out in the Trade Related Intellectual Property Aspects Agreement, better known as TRIPs, an international treaty acceded to by over 140 countries. Implementation of the standards and requirements occur by legislation in member countries, and as such, patent law varies somewhat among the members. Historically, the patent law system of the United States exhibits some substantial differences to the system of Europe and many other countries. Because the United States has one of the largest and most established patent systems, some of the questions are designed to illustrate these differences.
The original recipients of this quiz were enthusiastic about it as a learning tool. We hope you enjoy it, learn from it, and improve your own skills.
A patent gives the owner the right to:
- make her invention
- commercialize her invention
- publish the results of tests using the invention
- keep others from making her invention
- collect a monetary award from the government
- 1 and 2
- all of the above
Why? Patents confer exclusionary rights. The Trade Related Intellectual Property Aspects (TRIPs) Agreement, which was agreed upon in 1994 by the member states of the World Trade Organisation (WTO), states that the patent right holder can prevent others from "making, using, offering for sale or importing for those purposes" the invention.
Because patent claims in one patent can dominate claims in a second patent, the rights holder may not always be able to practice her invention without the consent of the first rights holder. For example, if one patent claims "A chair" , and a second patent claims "A 3-legged chair", the second owner can not make her invention without permission from the owner of the first patent. Conversely, the owner of the first patent could not make 3-legged chairs without permission of the owner of the second patent, but could make any other kind of chair.
A policy (or policies) behind the patent system is:
- to encourage an inventor to disclose an invention by granting exclusive rights over the invention to the inventor.
- to benefit the public by limiting the scope and term of the exclusive rights granted to an inventor.
- to benefit the public through encouraging innovation by publishing a full disclosure of the technical details of the invention.
- to benefit the public through guaranteeing that the inventor can commercialize his/her invention
- 1 and 2
- 1, 2 and 3
- 2, 3 and 4
Why? Patents are thought to spur innovation by incentivizing the disclosure of what would otherwise be secret: the nature and details of an invention. To compensate an inventor for providing to the public the details of his/her invention, legal protection for the described invention for a limited time period (typically 20-years) is granted, potentially enabling them to profit from the marketing of the invention. Further innovation carried out by others is facilitated by being able to learn from and build upon the described invention. However, there is no guarantee that an inventor will be able to market his/her invention, as the rights given are not a true monopoly, but an exclusionary right. His/her invention may be dominated by other patents, or in fact may not be commercially viable for any number of reasons. Most patents are never licensed or practiced.
The minimum requirements for obtaining a patent are that the invention must be:
- non-obvious or include an inventive step
- useful or capable of industrial application
- 1 and 2
- 1 and 2 and 3
Why? As set out in TRIPS, the minimum requirements for an invention to be patentable include all the standards mentioned above. Novel means to be new in the sense of not having been publicly known before. To determine whether an invention is novel, patent examiners establish whether or not the invention has been published or disclosed publicly before the earliest filing of the patent application. In most countries, a written publication anywhere in the world describing the invention destroys its novelty. Additionally, if the invention has previously been used in the country where patent protection is sought, the invention will be deemed not novel.
For an invention to be patentable it must be non-obvious to a person of ordinary skill in the field of the invention. In most countries the requirement of non-obviousness is expressed as an inventive step over the prior art. In other words, a person who has all the publicly available information in the art of the invention and applies his/her skills would not come up with the same invention. Obviousness is a difficult requirement to assess even with well-established guidelines to assist patent examiners.
The requirement of industrial application or usefulness is a way to distinguish mere scientific advances in basic sciences or theoretical matters, which are not patentable subject matter, from products or processes that have real life application.
However, the standards of novelty depend on awareness by examiners of prior art wherever it is deemed relevant. The standards of obviousness are extremely contentious as well.
An inventor was awarded a patent in the U.K. on a method for selecting transformed plants and has practiced the mentioned method only in the U.K. Six months later, another person who independently invented the same method in Australia wants to obtain a patent in Australia. She:
- could do it without major problems
- would not be able to do it because the granted patent was published in the U.K.
- would not be able to do it because the method is used in the U.K.
- 2 and 3
- none of the above
Why? Previous written publication of the same invention anywhere in the world would render the invention not novel in Australia, such as in this question, or in any other country. Once an invention is disclosed to the public, and there is a written evidence of that disclosure anywhere in the world, the invention is not novel anymore. It does not matter whether the disclosure is part of a granted patent, a published patent application or a journal, as long as the public has access to the documents.
The method mentioned above was not patented or published anywhere but has been used in the U.K. and only in the U.K. since 1997. Another person who independently invented the same method in Australia in 2001 wants to obtain a patent in Australia. She:
- could do it without major problems
- would not be able to do it because the invented method has been used in the U.K.
- could do it only if the method has not been described in a written publication anywhere in the world
- 1 and 3
- none of the above
Why? In Australia and other countries, including European countries, an inventor would not be entitled for a patent on his/her invention if the invention has been used by others in the country where protection is sought. In other countries, notably the United States, the invention must have been known in the U.S. to prevent a patent by others. In the U.S., Europe, Australia and many other countries, patenting is barred by a description of the invention in a printed publication anywhere in the world before the filing date for a patent application. Please be aware that these rules may not be followed in every country. The precise rule should be looked at for each particular country in which you are filing an application. This question serves, however, to illustrate common types of prior art that an inventor needs to be aware.
A patent application is filed on 1 January 1999. The application is published 18 months later on 1 July 2000 and granted on 30 May 2001. The patent is valid until:
- 30 May 2021; 20 years from the grant date of the patent
- 1 July 2020; 20 years from the publication date of the application
- 1 January 2019; 20 years from the filing date of the application
- some other date
Why? According to the requirements specified under the TRIPS Agreement, a patent is valid (enforceable) from the grant date until 20-years from the filing date of the application. TRIPS was effected in 1995 in industrialized countries belonging to the WTO, in 2000 for most of the rest of the member countries, and it will enter into effect in 2005 for the least developed member countries. Most countries with existing patent systems already had a 20 year patent term, except for the United States. Patent applications filed in the United States prior to 8 June 1995 were awarded a 17 year patent term from the date of issuance. To determine the term of a patent, the 20 years begin counting from the earliest filing of the patent application. The patent remains valid for the entire time as long as any required maintenance fees are paid.
A patent awarded by the patent office in Japan is valid in:
- Indonesia and its territories
- Japan and its territories
- All ASEAN countries
- All countries that adhere to TRIPS
Why? Patents are rights that are subject to national boundaries. The rights have the frontiers set by the government in the jurisdiction where the patent has been awarded. The patent rights granted by the Japanese Patent Office are limited to Japan and its territories.
Assuming an applicant has indicated a desire to have a patent valid in all European countries and elects to have the application examined by the European Patent Office, a regional patent office, the patent that is ultimately granted is valid:
- automatically in all countries that are members of the European Patent Office
- automatically in all European countries, regardless of whether they are member
- upon registration in each country that supports the European Patent Office
Why? The European Patent Office (EPO) is a regional patent office that examines patents under the European Patent Convention (EPC). The EPO provides a centralized searching and examination authority for the signatory countries. In such case, the patent application will be examined in each country and may have different claims granted. There are 20 European countries that subscribe to the EPC, and membership to the EPC is not limited to the members of the European Union. A European patent is in force only in the countries designated by the applicant where registration (often called conversion) takes place. Conversion involves filing a translation of the patent, if necessary, to the official language(s) of the countries where enforcement is sought and payment of the national fees required. Alternatively, an applicant desiring protection in EPC countries can apply separately to each country's patent office. Other regional patent offices with similar systems to the EPO may be found in Africa (ARIPO and OAPI) and in Eastern Europe.
An international patent:
- is the result of an international application filed under the international Patent Cooperation Treaty (PCT)
- is valid in all member countries of the PCT
- is valid only in the PCT countries designated by the applicant upon filing the application
- 1 and 2
- 1 and 3
- there is no such thing as an international patent
Why? There is no such thing as an international patent. The PCT is an international treaty administered by the World Intellectual Property Organization (WIPO), a special arm of the United Nations, that provides the opportunity to file a sole "international application" for an invention in member countires where the applicant would like to seek patent protection. WIPO receives and processes the applications, which must be filed at WIPO within one year of the original filing in the home country. The multiple countries listed by a two letter code under the heading "Designated states" on the front page of a PCT application do not indicate that the application for a patent will be granted in all the listed countries. To obtain a patent in those countries, the applicant must be file the application in each of the national patent offices, pay fees, have translations done and comply with the regulations of each individual office. Depending on some procedural issues and fee payments, the applicant has either 20 months or 30 months from the original filing date (the date the application was filed in the home country) to file in each of these other countries. During that time, applicants have the chance to decide whether and where it is worth to seek national patent protection for their invention. Given the costs, most applications are filed in a few other countries at most.
You have a granted patent in the United States and in Australia on using GUSPlus, a very sensitive detection system for identifying transformed plants. A couple of colleagues of yours are working at an Australian non-profit research institute and another is working at Cornell University in the United States, and they want to use the GUSPlus system for research purposes to identify transgenic plants. They can:
- use it freely without the need to tell you
- use it, but they should tell you first
- use it only if they get a license or some other form of permission from you
- cannot use it at all
Why? One of the patent rights allows the owner to exclude others from using an invention. In both the United States and in Australia, there is no express exception in the patent laws for research use of a patented invention, even in non-profit or educational institutions. Thus, your colleagues are infringing your patent rights by using your protected invention for research purposes without your consent. As a result, there is a need to obtain a license or permission from the patent owner to use a protected invention for research purposes.
Some countries (not the USA and Australia) allow the use of a patented invention for educational or non-commercial research purposes or even certain commercial purposes, such as clinical trials directed at commercialisation. In some countries, there is a distinction between research on the invention and research using the invention. Research on the invention refers to use of the invention with the aim of improving it. The contribution of new aspects to the invention is in line with patent policy, which is to foster innovation. On the other hand, research using the invention implies a use for the exact purpose for which it was created and protected. In this case, there is no innovation purpose, and the user would be undermining the rights of the patent owner by denying the revenue him/her would normally get for the commercialization of his/her invention.
In reality, non-profit research institutions are rarely approached by patent owners regarding non-allowed uses of their invention, but there is a danger in adhering to "research-only" use of technology even in countries where there is a research exemption. The owner of the patent can stop or restrict commercialisation or even trials directed at commercialisation, despite the years and funding sunk into the research.
You are a farmer growing Bt-transgenic soybeans in Argentina and Humongous Company, a very large multi-national agricultural company, has a valid patent in the United States, but not in Argentina, that claims Bt-transgenic soybeans. You will be:
- infringing Humongous' patent rights by growing Bt-transgenic soybeans in Argentina
- infringing Humongous' patent rights by growing Bt-transgenic soybeans and saving seeds for next sowing season in Argentina
- infringing Humongous' patent rights by exporting Bt-transgenic soybeans to the U.S.
- none of the above
Why? Patent rights can only be enforced in the country or jurisdiction where the rights are granted. By practicing a protected invention anywhere else in the world, a person would not be infringing the patent on that invention. Nevertheless, according to TRIPS and many national laws, the importation of a claimed invention into a country where the invention is subject to valid patent claims of a granted patent, for instance in the United States in this example, without the consent of the owner of the patent rights would constitute an infringement of the patent.
There are means by which a patent owner can even restrict use of its technologies in other countries where no patent has been granted. For example, by material transfer agreements (MTAs), or depending on national commercial regulations in cases where the owner carries out direct sales of the patented product, the owner could require a person that obtains the technology through sales contracts or material transfer agreements to not acquire the product through other means or to not engage in activities other than those explicitly allowed in the contract.
A published patent specification:
- is always a granted patent and is enforceable
- is always an application for a patent and is not enforceable
- is always an application for a patent and is enforceable
- could be either a granted patent or a patent application
Why? A publication of a patent specification does not mean it is a granted patent. In most countries, there is at least one publication of a patent specification before it is granted. Under the PCT, as well in most countries, the first publication of a patent specification is 18 months after the earliest priority date. Such publication makes the invention known to the public in general, but does not give enforcement rights to the applicant. If the patent is granted, the applicant may be able to claim damages for infringement of the protected invention as of the publication date in the countries that provide for that sort of protection. Before November 29, 2000, the application process for a patent in the United States was secret, and publication of the patent specification occurred only when the patent was granted. Now, the U.S. publishes applications 18 months after filing. The status of the publication can be inferred by the number assigned to the publication or a combination of the publication number and a letter indicating whether it is a patent application or an issued patent.
A PCT publication is:
- always a granted patent
- sometimes a granted patent
- always a patent application
Why? PCT publications are always patent applications. They never mature to an issued patent. As mentioned in answer to question 9, the PCT system is a way to file a single international application benefiting from the international search and examination facilities provided by authorized patent offices. To obtain an actual granted patent, the PCT application must be filed in the national patent offices in the countries where protection is desired.
If you want to know what is actually covered by a granted patent, you will look at:
- the title
- the title and the abstract
- the abstract
- the detailed description of the invention and the drawings
- the detailed description of the invention and the claims
- the claims
Why? The claims are the part of the patent specification that set the boundaries of what is subject to the right to exclude others. A claim describes in legal terms what the patent rights holder owns. The meaning of the claims is determined by the language of the claims, aided by the text of the patent and the "prosecution history", the record of the patent examination process. In the case of a patent application, the claims delimit what the applicant wishes to own and have no legal force.
The specification, also called the disclosure, is the written description of the invention. It comprises the title, the abstract, the drawings, and the text of the patent, comprising the background, summary of the invention, the detailed description of the invention, and the examples. Not all patents have each of these sections.
The title of a patent is like a headline of a newspaper; it is not necessarily indicative of the scope of patent protection. The abstract of a patent gives a general idea of what is contained in the patent specification, but it is also not necessarily complete. Unfortunately on many patent databases, searching is limited to titles or abstracts. This limitation is not in the public interest. The text of a patent is a valuable resource for getting to know the particulars of the invention, including its advantages, the problems that it is intended to solve, how the invention was achieved, other possible ways of generating the same result and how to practice the invention through different examples. Despite the comprehensiveness of the detailed description, it does not delimit the subject matter protected by a patent; aspects described in this section serve to illustrate and clarify the invention and how the inventors envision the invention could be applied. Matter that is described in the specification but not covered in the claims may be free to use, unless it's covered in another patent!
A published application in Brazil describes the cloning of glycosyltransferases, enzymes that transfer sugar moieties, from five different bacteria including Staphylococcus
, and Thermobacter
, and teaches how to obtain genes encoding the same enzymes from other bacterial genera. The only claim recites:
"An isolated DNA sequence encoding a glycosyltransferase isolated from Staphylococcus
You need a license before you can use DNA encoding the following in Brazil:
- a glycosyltransferase from Staphylococcus
- a glycosyltransferase from Haemophilus
- a glycosyltransferase from Pneumococcus
- 1 and 3
- none of the above
Why? A patent application does not confer any rights on the applicant. The claims in a patent application define what the inventor or applicant desires to claim. A person wanting to use an invention as defined in a claim of a granted patent would need to obtain a license from or the consent of the patent owner. A person wanting to use an invention as defined in the claims of a patent application does not need to obtain a license from the applicant to use the invention. However, in some countries under certain circumstances, if the patent is granted, the owner of the rights can claim royalties back to the date of publication of the application.
The publication mentioned above is a Brazilian granted patent. You need a license before you can use DNA encoding the following in Brazil:
- a glycosyltransferase from Staphylococcus
- a glycosyltransferase from Haemophilus
- a glycosyltransferase from Pneumococcus
- 1 and 3
- none of the above
Why? The claims in a granted patent define the "metes and bounds" of what the state has granted the inventor the right to exclude others from doing. A person wanting to use an invention as defined in the claims of a patent application does not need to obtain a license from the applicant to use the invention, but as soon as the patent is granted, the owner of the rights can exclude others from using the invention as defined in the claims, unless a license is obtained. In some countries under certain circumstances, if the patent is granted, the owner of the rights can claim royalties back to the date of publication of the application, if the claims that are granted are substantially the same as the claims in the application.
Two independent inventors come up with the same patentable invention and each of them decides to file a patent application in Canada, Germany and the United States. Who would get the patents?
- in each country, the first one to file the patent application
- in Canada, the first to file the patent application, and in Germany and the United States, the first to invent the invention
- in Germany, the first to file the patent application, and in Canada and the United States, the first to invent the invention
- in Canada and Germany, the first to file the patent application, and in the United States, the first to invent the invention
- in each country, the first to invent
Why? One of the major differences between the patent system in the United States and in the rest of the world is the "first to invent" rule. The United States patent office grants a patent to the first person to conceive the invention and to diligently reduce it to practice. Thus, two inventors of the same subject matter may need to provide proof of who invented the invention first. In the rest of the world, the rule of "first to file" applies. Therefore, the one who first files the patent application in a patent office in a country other than the United States will obtain the patent.
If you infringe a patent:
- you go to jail if caught
- you pay a large fine to the government
- the owner of the patent will sue you in a court
- nothing may happen
- 2 and 3 are both possible
- 3 and 4 are both possible
Why? In most countries, infringement of a patent is not a crime. That is, it is not a wrongful act against the state and therefore, an infringer does not go to jail. Infringement of patent rights is a civil wrong committed against a person or entity. Enforcement of patent rights is left to the owner of the rights. Thus, it is up to the offended party, usually the owner or the exclusive licensee of the patent, to seek a legal remedy for the violation of the patent rights. Nothing may happen if the patent owner does not become aware of the infringement, or if a business decision is made not to take any action against the infringer of the patent. In the case that the owner of the rights does choose to enforce the rights, it is often possible to settle the matter with the infringer out of court. Alternatively, a suit may be filed against the infringer in a court. The remedies that a court may grant for a patent owner include injunction (an order to stop the offender from doing the wrongful act), account of profits (payment to the patent rights holder of the profits made from the infringement of the patent, or some percentage of them in lieu of royalties), and award of damages (monetary compensation to the owner of the rights).
You and a couple of colleagues are the inventors of a new drug that successfully tackles stomach cancer and has few unwanted side effects. Your colleagues decide to publish the methodology used to develop the drug in a prestigious scientific journal. The article is published in January 2001 and the research results are presented in two international conferences in March 2001 with great success. In the meantime, your team realizes that it would be worthwhile obtaining a patent for the new drug. A patent specification is diligently prepared and filed in the United States and with the European Patent Office in April 2001. Which of the following scenarios is the most likely:
- because the invented drug fulfills the criteria for patentability, your team is awarded the patent in both jurisdictions.
- because the invention was published before the filing of the patent application, your team is denied a patent in both jurisdictions.
- because the invention was published within one year of the filing of the patent application, your team is allowed a patent in both jurisdictions.
- because the invention was published within one year of the filing of the patent application, your team is denied a patent in Europe, but granted in the United States
Why? In Europe, there is an absolute novelty requirement. That is, anything relevant to an invention made public either in written or oral form anywhere in the world before the date of filing of a patent application, can be used as prior art against such invention. A publication prior to the filing of a patent application will also render the invention unpatentable in Australia, even if the authors of the article and the inventors were the same individuals. Thus, your own prior publications will destroy the novelty of your invention in Europe and in Australia. In contrast, in the United States, there is a 12-month grace period to file a patent application for an invention disclosed in writing anywhere in the world. After a year, the publication will count as prior art against the invention. Very few countries have a grace period.
A patent on a method to heal wounds using turmeric has been granted in both Europe and in the U.S. in January 2001. You, as a person not involved at all in the alleged invention, have written evidence proving that the method was well-known not only in the mentioned places, but also in other parts of the world. You find out about the patent in August 2001. In the present circumstances you could:
- file an opposition against the granted patent before the patent offices in both the United States and in Europe alleging lack of novelty
- file an opposition against the granted patent before the United States patent office alleging lack of novelty
- file an opposition against the granted patent before the European patent office alleging lack of novelty
Why? Opposition procedures, which are in place in many countries, allow public scrutiny of published patent applications or published granted patents for a limited period of time. The Europe patent office gives a 9-month period after the grant of a European patent to oppose the patent on certain grounds. In the United States, there is no opposition procedure. Instead, there is a re-examination procedure where anyone can request the re-examination of a granted patent by the patent office, but only on the grounds of prior art not considered by the examiner during the patenting process.
The following is a good reason to search for patents and patent applications with the CAMBIA Patent Lens search:
- for scientific information
- for information on freedom to operate
- to see if your idea is patentable (novel and non-obvious)
- to see what your competitor is up to
- 2, 3, and 4
- all of the above
Why? Patent searches can have different purposes depending on the interest and particular situation of the person conducting the search.
Patents are a source of scientific information as well as scientific publications and in many cases, they are complementary to them or could be the only information available. So, the text of the invention (the specification), including the examples and the figures of the patents can provide good information of a technological field. In our database, you can search the full text of a patent, which gives you the advantage of finding relevant information in the document.
Patents also will tell you whether you have freedom to operate in a field without infringing others patents rights. In this case, the search would concentrate in finding closely related granted patents that are in force. Within those patents, the most important part to look at is the claims. Claims will tell you the limits of the rights granted to the patent owner.
To determine whether your invention is patentable, there is a need to search for prior art, including granted patents and patent applications that are closely related to the product or process you wish to protect. Everything published that might be relevant to your invention can count to assess the novelty of your invention. In this case, the complete specification of a relevant document, mainly detailed description of the invention and claims, should be examined.
If you know who your competitors are, you may want to know what they are inventing, the status of the patents for example, whether they are granted or not and in what countries they have sought protection. The front page of a patent application contains the name of the inventors and the applicant of the invention. In our database, you can search for names of inventors or entities that have applied for patent applications under the PCT (the documents start with the WO letters), granted European patents (EP B1 or EP B2) and granted U.S. patents (US).