SAQ 4: Who is authorized to exclude all others from making, using, selling, offering for sale or importing an invention?

Answer: The owner of the patent can exclude others from making, using, selling, offering for sale or importing the patented invention and can also exclude commercialization. This exclusion is only applicable in the countries where the invention is protected by a patent.

In one sense a patent is a deal between the public and the patent holder.With the grant of a patent, which is premised upon satisfying all the conditions for patentability as discussed above, the patent holder receives the right to prevent anyone else from practicing the invention claimed in the patent. In exchange, the government, by requiring compliance with the conditions for

patentability and giving patent protection for a fixed term, ensures that the information regarding the invention is publicly disclosed, and the invention itself is available for anyone’s use after the expiration of the patent. This period is typically 20 years, measured from the date of filing of the patent application. In all the countries in which a patent holder chooses to patent the claimed invention, the issue of enforcementwould become important after the grant has been issued. 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.

In order to have protection in lots of different countries, a patent is required in each of them. So you may wonder if it is possible to obtain a worldwide patent.

Audio segment 6: Is it possible to get a worldwide patent?

In the current state of the international patent system, no. There is noone patent that covers every country in the world, or even a largenumber 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, which provides for the filing of a single international application that can become a multitude of national applications, not actual patents but applications, 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, as you can imagine. 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.

And you would pay that annual fee in every country in which you wanted the patent to operate?

That’s right. 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? That’s right.

The short answer therefore is "no". However, 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.

Finally it is worth mentioning that patent protection is only one way to protect an invention. Listen to the audio to find out another means of protection.

Audio segment 7: 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, as I said before, 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. With a patent, it doesn’t matter whether someone else knows how to make your product, indeed they will know simply from reading your patent application. So, no matter how public the information is, if

you have a patent you will be protected. 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.

Date: 2015-12-18; view: 750