Tips and tricks

Patenting and Protecting Inventions
Jan 14

The definition of an invention

“Eureka” shouted Archimedes, after he had stepped into a bath and noticed that the water level rose, at which point he suddenly understood that the volume of water displaced must be equal to the size of the part of his body he had submerged. “Eureka”, in Greek, means “I found (it).” And till today, discoveries and inventions are significant factors for the development and progress of modern society.

The technical invention is a kind of scientific solution that solves an existing problem. A simple example of an everyday problem would be the difficulty of lifting a cup with a hot beverage. And a simple invented solution for this problem is a cup handle.

The present invention is, of course, very ancient and primitive. Nowadays, the inventions are much more complicated and subtle. The technical solution is considered an invention only if it advances the previously known scientific art. The invention may be described as an object, process or method, or as a new use of a known object. Novelty is one of the main features of the invention. Unless a particular solution is new, it is not considered an invention.

When evaluating inventions through the prism of patent law, a patent is the only legal tool that can protect a new invention and confirm the invention’s authorship. However, in order to be granted for patent protection, the invention must confirm the requirements of the patent law.

What inventions can be patented?

The criteria for patentable inventions are defined in different legal instruments, but the main requirements are the same in the majority of countries. These criteria are foreseen, for example, in the European Patent Convention, the United States patent law, and most other national countries’ patent rules.

The first requirement is novelty. An invention is considered to be new if it does not form part of state of the art. State of the art is held to comprise everything made available to the public using a written or oral description, by use, or in any other way, before the date of filing of the patent application. State of the art, or in other words, the prior art, is all the information that existed before the filing date of the patent application. It can be a technical document, that describes the working method of the invention, video file, that shows how the invention works, or any other form of disclosure that clearly shows the effect and functions of the invention.

It is important to note that the novelty of the invention must be historical and global. That means that if someone invented the same invention in one country at any point in time, nobody else would be granted a patent in a different country for the same invention.

It is also relevant to highlight, that the inventor himself may lose novelty if he publicly discloses his idea before filing a patent application. Even if a single sample of the invention was sold, the requirement for novelty could already be void. It is always safest not to disclose the invention to anyone until a patent application is filed.

The second condition for the patentable invention is an inventive step

An invention shall be considered as involving an inventive step if, having regard to state of the art, it is not obvious to a person skilled in the art. In terms of the inventive step, the European Patent Organization has developed a “problem-solving approach”. It first identifies the closest analogue, then determines the problem solved by the invention and, in a third step, determines whether the solution of the problem to the person skilled in the art is not obvious. The example of the lack of inventive step would be using the interchangeable materials, such as glass instead of plastic.

The third condition required for obtaining a patent is the industrial application of the invention. An invention is considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture. Therefore, for example, computer codes are not patent protected as the code itself is not directly used in the industry and does not perform any technical processes.

Only when all three conditions of the patent law are fulfilled, the inventor is granted patent protection. Once granted, the patent protection lasts for 20 years from the day the application was filled.

Protection of patents

Another important aspect of patent law is that patent protection is territorial, and there is no worldwide patent. It is necessary to understand that the country grants patent protection under its rules. Because each state has its patent laws and regulations, a patent issued by the authorities of a particular country will be valid only in that country. For example, a patent issued in the United States will not be valid in European countries. Making or selling an analog of such patented invention in Europe would not infringe on the rights of the US patentee. Therefore, it is crucial to anticipate the markets (territories) where patent protection is needed. After a statutory term, that is typically 12 months (so-called priority period), filing a patent application for the same invention in a different country may no longer be possible, and the applicant will lose the right to defend the invention abroad.

As mentioned earlier, it is not possible to obtain patent protection for an invention in all countries of the world with a single patent application. Patent applicants must submit the patent application in each state individually.

There exists, however, the International patent application (not to confuse an application with a patent). The international patent application procedures are administered by the World Intellectual Property Organization (WIPO) and governed by the international Patent Cooperation Treaty. The Patent Cooperation Treaty provides opportunities for filing a patent application in most countries around the world more efficiently by reducing the administrative burden and extending the filing deadlines. However, even in this case, the applicant must apply in each country separately, translate the patent application text into the national language, pay the governmental fees, and, in most cases, use the assistance of the local patent attorney. Different patent laws and practices in different countries also affect the fact that the same invention may have a patent granted in one country but refused protection in another. For example, in the United States, it is easier to obtain patent protection for computer technologies than in Europe. The threshold of industrial applicability of the computer-implemented inventions is lower in the US than in Europe, resulting in significantly more patents issued in the US.

Value of patents

Patents have value for its owner and also for the society as such.

For the patent owner, patents provide incentives to and protection by offering him/her recognition for the creativity and the possibility of material reward for the inventions. Patent protection provides the right to prevent unauthorized use of the protected technology, to defend the rights in court, and to initiate legal proceedings against any persons fraudulently using the patented invention. However, the primary responsibility for monitoring, identifying, and taking action against infringers of a patent lies with the patent owner.

A patent owner has the right to decide who may – or may not – use the patented invention. Patent protection means that the invention cannot be commercially made, used, distributed, imported, or sold by others without the patent owner’s consent.

On the other hand, patents are invaluable tool for the inventors and scientific community to build further knowledge and invent better technologies. The obligatory publication of patents and patent applications facilitates the beneficial spread of new knowledge and accelerates innovation activities by, for example, avoiding the necessity to “re-invent the wheel”. Once knowledge is publicly available, by its nature, it can be used simultaneously by an unlimited number of persons. The dissemination of knowledge about new inventions encourage further innovation, which assures that the quality of human life and the well-being of society is continuously enhanced.

The article is written by patent attorney Jūratė Breimelytė.