Overview of Patents and the Patenting System

A patent secures for its owner the national right, in the country granting the patent, to exclude others from commercially utilizing the claimed invention for a limited period of time. The patent system is intended to encourage innovation by providing rewards in the form of a temporary monopoly in exchange for the full disclosure of inventions.

Thus, a patent may be considered a contract between the inventor and the government in which the inventor agrees to disclose the invention to the public, in exchange for a monopoly to exploit the invention for the term of the patent, which is usually twenty years.

A patent as such does not give the owner any positive right to use the invention, since use of the invention may be illegal, require regulatory approval or infringe patents of third parties.

The owner of the patent can provide access for third parties to the patented invention, by granting a license that may require the payment of license fees, royalties or other forms of payment, depending on the nature of the agreement between the parties.

To be patentable, an invention must be new and useful, meaning that it was not previously known to the public, and that it has commercial applicability. In most countries the novelty requirement is absolute, providing that the invention must not have been known anywhere in the world.

Beyond novelty and utility, the other main requirement for patentability is that the invention must also possess an inventive step, meaning that it must not be obvious in view of the current knowledge available to the public.

Finally, it is essential that an application for a patent disclose the invention in a manner that is sufficiently clear and complete for a person of ordinary skill (in the particular field to which it pertains) to be able to understand it and carry it out. In other words, for a patent to be valid it is not possible to withhold essential aspects of the invention as trade secrets.

Some types of inventions are patentable only in certain countries. This limitation is of relevance to the business of most of our clients only in respect to methods of medical treatment. Claims to methods of treating a human subject are patentable only in the United States, Australia and certain other relatively minor countries. In most countries, this type of invention has to be claimed in other terms, such as use of a particular chemical compound in the preparation of a medicament for the treatment of a particular illness.

To obtain a patent it is necessary to file an application in the country concerned. Although patents are always national rights, there are now certain international bureaucratic mechanisms by which they can be applied for. The two main international patenting systems relevant to the business of most of our clients are the Patent Cooperation Treaty (PCT) and the European Patent Convention (EPC). The PCT system enables the filing of a single patent application in a member state of which the applicant is either a resident or a citizen, which is valid for any designated selection of member states of the PCT.

During the international phase, the International Patent Application is examined for certain formal requirements and an International Search Report is issued which provides an assessment of the relevant information known to the public at the time the application was filed. It is then possible to request that the application undergo a preliminary examination to determine whether the content of the application conforms to the rules of patentability. At the end of the international phase, the application must be filed in any of the designated member states for further processing. This is referred to as entering the national phase, and each such application will be examined by the national authority in accordance with its rules and regulations. Eventually the international application may mature into granted patents in individual states.

Similarly, the EPC allows for a patent in nearly all of the European countries to be derived from a single application, which is examined by the European Patent Office in Munich. After the patent is examined and granted, the European patent must be registered in each of the designated states where a national patent is desired.

Patent applications are generally subject to the International Convention (the “Paris Convention”) to which most countries are signatories and which provides that the first filing date in one country, which is known as the priority date, is recognized in all the other countries provided that further applications are made within twelve months of the first date.

Whichever route is used, the result will be a “family” of related patent applications for the same invention that will be examined by the patent authorities of the major jurisdictions. Examination is an interactive process between the patent examiner and the applicant’s patent attorney in that jurisdiction. Any objection raised by the examiner to the grant of the patent has to be overcome either by argument or by appropriate amendment, or both, before a patent can be granted. In some countries, notably in the United States, the examination procedure is secret until after the mature patent is published. In other countries the examination procedure is open to the public, and generally in these cases it is possible for third parties to intervene by filing relevant information for the Examiner to use.

After a patent has been granted it may still be challenged. In many countries there is a defined period of time for filing opposition either to the granted patent, or to a patent about to be granted. In the European Patent Office, for instance, there is a nine-month period from the date of the grant of the patent, for third parties to “oppose” the grant of that patent.

Apart from the opposition period, it is also possible to challenge the validity of a patent throughout its duration, depending on the laws of the country concerned. The validity of a patent is usually challenged by a defendant during infringement proceedings.

Patents only stay in force if renewal fees are paid at regular intervals predetermined in each country, throughout the lifetime of the patent. Failure to pay such renewal fees results in the lapse of the patent, though failure to pay such fees may be rectified and the patent restored if action is taken within a set period of time.

In the vast majority of countries a patent is granted for twenty years calculated from the date of application for that patent. In certain countries it may be possible to extend the term of the patent in certain circumstances. Most notably, in the case of patents which claim pharmaceutical products, extensions are provided for under law to compensate for the period of time required by regulatory review processes prior to authorization to market a new medicinal product. It is anticipated that some clients may be able to take advantage of these provisions under appropriate circumstances.