Are there any other ways of protecting an invention if you don't want to take out a patent, for whatever reason?

Patents

Patents are one of the oldest forms of intellectual property protection and, as with all forms of protection for intellectual property, the aim of a patent system is to encourage economic development by rewarding intellectual creativity. The aim of a patent is to encourage economic and technological development by giving reward to intellectual creativity. Under patent protection, both new creations and the further development of existing ones are covered. A breakthrough in science like the invention of penicillin is as equally important and protected as a new lever on a machine invented to make the machine run faster. Patents protect inventions and in general, an invention may be defined as a new solution to a technical problem. The solution is the ‘idea’ and protection under patent law does not require that the invention be represented in a physical embodiment. However, there are things that cannot be patented. These include; things discovered in nature and machines that defy the laws of nature, such as a perpetual motion machine. Other exclusions, which are commonly set out within the applicable law, are scientific theories and mathematical methods; schemes, rules and methods for doing business; and methods of treatment for human or animals or diagnostic methods.

So a patent protects new and useful inventions. To be patentable, an invention must also meet certain criteria relating to noveltyand other features. The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement) provides three criteria and conditions for an invention to be patentable:

· it must be new or novel, meaning that the invention must never have been made before, carried out before or used before;

· it must involve an inventive step. The invention must be enough of an advancement to be considered ‘non-obvious’ by a person having ordinary skill in the art;

· it must be capable of industrial application, meaning the invention must be able to be used on a certain scale in practice.

Once a patent application is on file, there are two general approaches: in some countries it is reviewed only as to formalities, while other jurisdictions also examine the application substantively by a technical expert to ensure that it meets the requirements of patentability.

The application for patent must also comply with some other formalities. As a general rule, a patent will be granted to the first person to file a patent application. This is called the ‘first-to-file’ system. That is why the filing date of an application for patent is very important.

The Paris Convention for the Protection of Industrial Property (1883) has provided for ‘the right of priority’. This right means that, on the basis of a regular first application filed in one of the Contracting States, the applicant may, within a period of 12 months, apply for protection in any of the other Contracting States. These later applications will then be regarded as if they had been filed on the same day as the first application. In other words, these later applications will have priority over applications, which may have been filed during the same period of time by other persons for the same invention.

For the period of protection the patent holder may exclude others from making, using, offering for sale, selling, and importing the invention claimed in the patent. However, the patent owner has the right to assign (sell) or to license the patent. In other words, the patent owner may if he/she so wishes, transfers his/her exclusive rights to another person through the conclusion of licensing contracts.

The term of a patent is typically 20 years from the date on which the application is filed, and what that does is give the developer of the technology the right to have it to himself for a certain number of years in exchange for full disclosure to the public of how to use it. When the patent rights expire, the technology becomes public property, and the public is free to use it for their own good.

There are certain situations where the exclusive rights of a patent owner can be used without his/her authorization. In certain cases, in fact, the use of the patented invention may be authorized to a third party either by the competent court or by a Patent Office (depending on the law of the country) through a regime called compulsory licensing. As provided under the Paris Convention and the TRIPS Agreement, the regime of compulsory licensing prevents the abuses, which might result from the exclusive rights conferred by a patent. This regime may also be applied in case of non-use of the patented invention within a prescribed period (generally four years from the filing date of application for patent, or three years from the issue of patent). As provided under the TRIPS Agreement (Article 31), a number of conditions and circumstances must be respected before granting a compulsory license to a third party.

Enforcement of patents is a large subject, for which this course can merely point out the guiding principles involved. To begin with, it is the patent holder that must seize the initiative in the face of potential infringement. Detection of potential or actual infringements, and bringing these to the infringer's attention rests exclusively with the patent holder. In a majority of situations, a polite letter giving notice of the existence of the patent is sent. Carrying the implication that a lawsuit might follow, such letters often prove very successful, leading to either a suppression of infringement or a conclusion of a successful licensingarrangement. There are, however, cases in which no mutually advantageous negotiated solution can be found, even after lengthy attempts. During the course of an infringement action, in the pre-trial phase, negotiations may still take place, often through use of a conciliator or arbitrator. Interestingly, settlements often include the earlier-mentioned license. As was said before, the issue of enforcement is deep and complex; you may want to pursue this subject further within the context of the domestic law of the country where you are situated.

Worldwide protection:There is no one patent that covers every country in the world, or even a large number of the countries of the world. The patent system is still a territorial system; in order to be protected in a particular country, you have to be granted a patent in that country. Now, with the globalization of the world economy, the world is moving towards a more international system: we have the Patent Cooperation Treaty (PCT), which provides for the filing of a single international application that can become a multitude of national applications (but not patents) and they are then examined in each of the countries designated. There are certain regional systems, like that of the European Patent Organization, under which a single examination, if successful, results in a bundle of national patents. There has been some discussion in Europe about having a single European patent – one that would cover all the countries of the European Union, although there are great difficulties with that.

There is still no such thing as a single world patent, nor are there any plans for one, because there are a great many difficulties with that too, but discussions are going on to find ways of bringing down the cost of obtaining patent protection worldwide. Among other things there is the cost of all the examinations of the same invention that have to be conducted in different countries under present arrangements, the cost of translation and the cost of maintaining a patent, as to keep a patent in force one generally has to pay an annual fee, which can be quite substantial. If you have patents in ten countries, you have to pay the maintenance fees in each of those ten countries, because if ever you failed to pay in one of them, your patent would lapse and you would lose your patent protection in that country.

There is an international agreement administered by WIPO called the Patent Cooperation Treaty (PCT), for the filing, searching, publication and examination of international applications. The PCT makes it easier to obtain patents in the Contracting States by providing for the filing of one international application, which may be subsequently prosecutedin the different designated national or regional Offices of States party to the PCT. (A subsequent module on the WIPO International Registration Systemscovers the PCT and two other international agreements in more depth). However, even under the PCT, the granting of patents is left to those designated Offices. You will learn more about this treaty in the WIPO Treaties module of this course.

Are there any other ways of protecting an invention if you don't want to take out a patent, for whatever reason?

The patent is the most effective way of protecting an invention, but patent rights are granted in return for the inventor’s full disclosure of the technology to the public. Another effective way of obtaining protection is to keep the technology secret, and to rely on what we refer to as trade secrets, to keep information concerning the invention confidential. The difficulty of that method is that, once the product is put on the market and can be dismantled, the secrets can be learned merely by looking at the product, and the trade secret protection is lost. Trade secret protection is still available, however, and is very suitable in particular, for what is referred to as the know-how, namely the technical expertise required to use a given technology in the most effective way. And very often, the technology itself will not be protected by patents, because it forms part of the expertise of people who are skilled in the art, and keeping the knowhow as a trade secret is a way of protecting your technology.

Legislative Texts:

• Paris Convention for the Protection of Industrial Property

• Patent Cooperation Treaty (PCT)

• Agreement on Trade Related Aspects of Intellectual Property Rights

(TRIPS Agreement)

Date: 2015-12-18; view: 965