Author: Phd. Boris Kržan
Intellectual property (IP) is the result of human creation and states are motivated to protect the IP rights through appropriate legislation to ensure fair trade, which promotes economic and social development. IP is traditionally divided into technical (patent, utility models) and non-technical areas (trademark, model, geographical indication, plant variety, copyright). Forms of intellectual property are also a trade secret and “know-how”, which may be of a technical or non-technical nature and are protected by legal acts of a company or public institution. The following article provides some basic information about patents.
The patent protects new technical solutions to technical problems that were not previously satisfactorily solved. This means that the inventor can protect his solution to a problem he encountered when using a known device or procedure or when attempting to implement it after a new idea or discovery with a patent, if the solution is new on a global scale and at the same time inventive enough, which means that it is not self-evident for an expert in a particular field.
A patent can be defined as a legal right granted by the government or governing body to the patent owner, which prohibits all others from using the invention in question for commercial purposes without the prior consent of the owner. IP rights only arise in the country in which the patent has been granted. As the application requires extensive and well-prepared documentation, the patent granting process is time consuming and generally lasts four to five years. That’s why the costs of examination are higher compared to other forms of IP. However, many patent holders overlook the fact that the highest costs for patent enforcement occurred after certification. Patent fees are paid separately each year, and it should be noted that in many countries they are progressively increasing. For example, the European Patent Organization (EPO) fee for the third year is 490 EUR and for the tenth year 1640 EUR. In first five years average costs of patent application, attorneys fee and renewal fees amount about 10 000 EUR. For next remaining fifteen years the price is 21 480 EUR.
When to patent?
- Patent if development is expensive and copying is cheap.
- Patent if you expect great commercial success or you want attracts investors.
- A patent application is also convenient for finding out if a similar protected invention already exists.
- With a patent application, you can avoid possible lawsuits by multinationals.
- With a patent you can block competitors – strategic move.
- Patents demonstrate reputation and innovative orientation of the company.
Before you start the process of protecting an invention with a patent, you should find out what patent protection rights allows you. In practice, many inventors simply and erroneously imagine acquired rights to exploit the invention. One of the most common examples is the belief in the right to unrestricted commercialization of an invention. However, patents do not grant the right to use the invention. For example, before a new drug can be sold on the market, it needs the formal approval of government agencies. Rather, a patent is a negative right. It is the right to exclude others from doing certain things with your invention, whilst not conferring any positive or enabling right on the owner. Patentees can exclude others from making, using, selling or importing their invention.
Many patent holders are unaware that their patent may infringe the rights of holders of certain older patents. Innovation in the case of more economical use of a product does not necessarily mean that the basic form of this product or process is not patented. In the grant procedure, official examiners do not verify patent infringement to the third parties.
You might have invented the first-ever electric kettle, which uses a ceramic heating element as its base-plate. This has advantages over kettles, which have a metal heating element upon which lime scale (calcium deposits) forms. Such a kettle might be novel and inventive, and get you a patent (patent B). However, it still falls within the scope of an earlier patent for all electric kettles (patent A). In order for you to make, use and sell your invention, you need a license from the patent owner of the earlier, broader patent, but they in turn would need a license from you to make kettles with ceramic heating elements. This is where you could enter into a cross-license agreement.
To establish whether you are free to use your invention, you have to perform a patent search. It is best to do this before starting development, so as not to waste time and effort by duplicating what others have already done. If in doubt, ask a patent attorney or other patent professional.
Given the enormous number of patents that exist today, it is quite difficult for many companies to ensure that their products do not infringe a patent. Despite the difficulties, companies have no option but to carefully search and analyze existing patents first.
It is common for patent attorneys to discourage inventors from doing a prior art search on their own. If you are an expert in your field of science and engineering, outsourcing your prior art is not necessary. You are probably already well equipped to conduct an effective prior art search on your own. You can do the prior art search effectively on your own because the best search tools are available free online. Still, keep in mind that while you can conduct the prior art search yourself, you’ll likely still need a patent attorney to help you develop a patent strategy and analyze patentability. A patent attorney is highly recommended to formulate the claims, as well.
From a legal perspective, the claims are the most important part of a patent document, as they define the extent of the patented technology. If product or process falls within the scope of the claims, then there may be an infringement and the patent owner can stop the company’s activity through an action brought in the courts. Damages and other remedies may be awarded if an infringement is found to have occurred.
Applicants and patent owners are interested in benefiting from their inventions. However, patent rights can be greatly diminished and even disappear by saying too much too soon (before filing a patent application) in a public forum. Good advice: talk to your agent or patent attorney first, your investors second.