How to Catch the Infringer—and How Not to be Caught

This chapter considers the issue of patent infringement from the perspectives of both the patentee and the potential infringer. When the owner of a patent becomes aware of commercial activity by a competitor, he will naturally want to know if the patent can be used to stop these activities. The first and most important question is whether the competitor’s actions are tantamount to infringement. Finding an answer to this question means analysing the scope of the claims of the patent in the country in question, as there are considerable differences from country to country in the way in which claims are interpreted. Every company that puts a product on the market or uses a process is a potential infringer of one or more of thousands of patents presently in force, so a thorough search should be carried out for any patents that might be infringed.

Drafting the Patent Specification

This chapter explains the procedure for drafting a patent specification. When an invention of any kind has been made, the first step towards drafting a patent specification is defining the scope of the invention, or forming a mental picture of what is to be claimed. The second step is putting that mental picture into words. Once the patent attorney gains a clear picture of the correct scope of the invention, he or she can begin the task of drafting the specification and claims of the application. The remainder of the chapter discusses the structure of the patent specification; priority and foreign filing texts; sufficient requirements in the US, UK, and other countries; and special requirements for biotech inventions.

Biotechnological Inventions

This chapter considers the law governing the patentability of biological inventions, including microbiological inventions, recombinant DNA technology, and monoclonal antibody technology. Patent protection for biotechnological inventions is of immense commercial importance. But patent law and practice have been unable to keep up with the rapid scientific progress in this field; issues such as inventive step, sufficiency of disclosure, and permissible breadth of claims have proved troublesome. There has been much litigation of biotech patents and courts have found it difficult in such a rapidly moving field to determine what was the general knowledge of the skilled person at the time that the invention was made. Another problem is the opposition of special interest groups to anything related to genetic engineering, particularly the existence of patents in this area.

Inventorship, Ownership, and Compensation

This chapter considers the law governing inventorship, ownership, and compensation. It first discusses inventorship in the UK, the US, and the European Patent Office. It then looks at the issue of ownership of the rights in an invention, covering common law provisions, contracts of employment, statute law in the UK, statute law in Germany, and academic inventions. This is followed by a discussion of compensation for employee-inventors in the UK, Germany, and other countries. The remainder of the chapter explains the right to apply for a patent and to be granted a patent, co-ownership of patents, disputes over the correct ownership of an invention, and the recordal and transfer of ownership.

The Nature and Origins of Patent Rights

This chapter begins by setting out the definition of a patent, covering issues such as exclusionary right, property right, and limited duration. It then traces the early history of patents in England. During the reign of Queen Elizabeth I, monopolies in commodities such as salt, coal, playing cards, and many others were frequently granted by letters patent either to raise revenue, or to reward royal favourites at the public expense. The first English patent granted to an inventor in the modern sense of the word appears to have been that to Giacopo Acontio in 1565 for a new type of furnace. The remainder of the chapter discusses the early histories of patents in Continental Europe (Venice, Germany, France, and the Netherlands) and North America.

Obtaining a Granted Patent

The Patent Cooperation Treaty (PCT) is a special agreement under Article 19 of the Paris Convention and is open only to states that are members of the Convention. Its main purpose is to make the patent application process simpler and cheaper by having a single set of formal requirements, and a single search and publication procedure, and by postponing translation requirements until thirty months from the priority date. This chapter first discusses the procedure for filing an international application, that is, a PCT application. It then explains the International Preliminary Report on Patentability (IPRP)—a preliminary, non-binding opinion by the international preliminary examining authority (IPEA) on the novelty, inventive step, and industrial applicability of the claimed invention.

Obtaining a Granted Patent

This chapter discusses the procedure for filing a patent application at the European Patent Office (EPO). EPO procedure is governed by certain basic principles. No decisions may be made unless the parties have had the opportunity to comment and oral proceedings must be held if at least one party so requests. In the absence of specific provisions, the EPO shall take into account the principles of procedural law generally recognized in the contracting state. When the applicant is faced with a possible loss of rights, for example as result of an adverse decision by the EPO, he (almost) always has the possibility to recover his position. An adverse decision may also be appealed, and if the applicant has failed to act in time, options to recover include: extensions and grace periods, where provided; further processing under the European Patent Convention (EPC); restoration of rights; and requesting an appealable decision.

Commercial Exploitation of Patents

This chapter describes the ways in which patents are commercially exploited by various industries. It discusses the use of patents to exclude competition in the pharmaceutical industry; patents for survival in the biotechnology industry; patents as a source of royalty income for universities; patents as lottery tickets for inventors; and patents as bargaining chips in the electronics industry. The final section explains the use of patents as tools for extortion. The term ‘patent troll’ has become widely used in the last few years, and is usually applied to an entity that has no business activities except asserting and litigating patent rights.

Maintaining a Patent in Force and Extending the Patent Term

This chapter discusses the maintenance and extension of patent terms. Applicants who receive patents in the countries in which they applied must be aware that these patents do not go on indefinitely. Subject to any extension provisions, these have a fixed legal term that, in most countries, is twenty years from filing as required by the TRIPs Agreement. This means that, if a continuation or continuation-in-part application is filed after that date, the twenty-year term does not run from the filing date of that application, but from that of the parent application. It used to be that refiling an application, by delaying the granting of the patent, extended the patent term, but this is no longer the case. The remainder of the chapter covers renewal fees; the effect of changes in patent term; patent term adjustment in the US; extensions to compensate for regulatory delays; and licences of right.

Filing a Patent Application

This chapter first addresses questions such as whether a patent application should be filed at all, and if so, when and where to file. As a general rule, if an invention appears patentable and may be of some commercial interest, a priority application should be filed. The applicant then has one year under the Paris Convention before significant amounts of time and money must be invested in filing in other countries. If the decision is made to file in other countries, or even to proceed to obtain a patent in the home country, the first filing gives a priority date that can be relied upon later. In other words, when in doubt, file an application. The remainder of the chapter discusses non-convention filings, European patent applications, international applications, registrations and patents of importation, and petty patents.