In this lesson, you’re expected to learn:
– the requirements for something to be patentable
– how to disclose an invention and obtain a patent
– claim scope and patent infringement
In simple terms, a patent may be thought of as a monopoly right to the use of the invention.
Requirements for a Patent Patent protection is not given to all inventions. Basically, patents are concerned with how things work, what they do, how they do it, what they are made of or how they are made. It can be for incremental improvements in known technology and does not have to be complex.
The requirements of a patent are:
NOTE: An invention shall be considered new if it does not form part of the “state of the art” (meaning prior art). In the European Patent Convention (EPC), “[the] state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application”.
However, if someone finds a way to improve a prior invention, a patent can be granted and its scope is limited to the improvement (i.e. what was outside the public domain or prior art).
The way to find out if an idea is novel is by conducting a “state of the art search”.
This requirement avoids granting patents for inventions which only follow from “normal product design and development”.
Machines, processes, improvements on product or processes, chemical compositions etc.
Examples of Non-Patentable Inventions:
Laws of nature (e.g. law of gravity), physical phenomena (e.g. process of recovering salt from seawater), abstract ideas, products of nature (e.g. NaCl – salt formula), and inventions that encourage offensive, immoral or anti-social behaviour.
1) Ideas are not protected! Because of the “novelty” requirement, inventors need to know who can be trusted with the invention. Prior to any disclosure (i.e. to a friend or even to IP lawyers), it is highly recommended to sign a confidentiality agreement. This is because a patent is granted to the first one who files its application.
2) While applying for a patent, the inventor is required to disclose exactly what the invention is, which will normally be published even if it is not granted, potentially destroying competitive advantage. Before the application, the key point to consider is the relevance of keeping the invention confidential.
3) In some countries, any public disclosure of an idea prior to filing an application for a patent will prevent the issuance of a patent – it will become a “state of art” (prior art). This public exposure can be a publication about the invention anywhere in the world, including on the internet.
After the expiration of this period, it passes into the public domain and can be used without restrictions.
For example, the employer may be entitled to ownership of the invention when the employee inventor was hired specifically to undertake research & development.
As previously mentioned, the patent will be granted to the first person who files its application and technical information about the invention will be disclosed. In return for the disclosure of the invention, when the patent is granted, the inventor is given a monopoly in the use of it.
The longevity of the patent suggests its critical relevance to the economic concerns of the government.
A claim specifies in words the boundary of your invention. It defines, in technical terms, to what extent the protection is sought in a patent application.
Under the territoriality principle, infringement is only possible in a country where a patent is in force.
1) The Incandescent Lamp Patent Case (1895)In 1880, Thomas Edison received U.S. Patent No. 223898, which was simply titled “Electric Lamp”. More than a decade later, the inventors accused him of infringing their patent. On reviewing the patent in question, however, the court found that the patent’s description was so vague and uncertain that the public couldn’t tell, except by independent experiments, how to construct the patented device, and thus found Edison’s patent invalid.