Other common exclusions under national laws, and the TRIPS

Agreement, are:

Scientific theories or mathematical methods.

Schemes, rules or methods, such as those for doing business, performing purely mental acts or playing games.

Methods of medical treatment for humans or animals or diagnostics methods (but the products used in the diagnosis could be

patented)

Plants and animals other than micro-organisms, and essentially biological processes for the production of plants other than nonbiological and microbiological processes.

In order to obtain a patent, an applicant must first file an application for a patent. Depending on the applicable law(s), the Patent Office may examine the application to determine whether the criteria, listed above, have been satisfied, before deciding whether to issue a patent. As mentioned above there may be excluded categories, which could cause the patent application to fail. Examples of such categories can be found in several national legislation. 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. An Office may also examine the application to determine whether it sufficiently discloses the invention such that someone skilled in the area or field with which the invention is concerned could make or use the invention. Providing an adequate written description to enable someone to practice the invention is generally what the patent applicant must give in exchange for receiving the benefits conferred by a patent.

The Paris Convention for the Protection of Industrial Property (1883), which is the oldest Convention administered by WIPO dealing with industrial property, 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.

You may be asking what benefits a patent confers, particularly if the invention has to be disclosed. In general the answer is that 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, transfer his/her exclusive rights to another person through the

conclusion of licensing contracts.

Listen to the next audio clip for more on this subject.

Audio segment 5: Can you then summarize the advantages of taking out a patent?

The advantages of taking out a patent are very specifically andtechnically the fact that the owner of a patent can exclude all others inthe territory covered by the patent from making, using, selling, offeringfor sale or importing the invention. That does not necessarily give the inventor or the owner of the patent the right to use the invention, if for instance such use would be illegal – as the use of a gambling machine would once have been – but the owner of the patent can prevent others from marketing and profiting from the invention for a period of years. 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.

You mentioned 20 years. Is that the same for every country in the world?

Yes. It is now provided by international treaty that the term has to be at least 20 years from the filing date of the patent application.

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.

Date: 2015-12-18; view: 785