PROTECTING INVENTIONS in the international environment Eytan Jaffe – Israeli Patent Attorney

– 1st Basic condition for obtaining a patent NOVELTY

Article 52(1) EPC: European patents shall be granted for any inventions which are … new 35 U.S.C. 102 (a) A person shall be entitled to a patent unless … the invention was known … Article 54(1) EPC: An invention shall be considered to be new if it does not form part of the state of the art. Article 54(2) EPC: The state of the art shall be … everything made available to the public by means of a written or oral description, by use, or in any other way … According to European case law information is “available to the public” also if only a single member of the public can gain access to it, and if there is no obligation to maintain secrecy ( e.g. T1081/01) obligation to maintain secrecy

NOVELTY 1st Basic condition for obtaining a patent INVENTIVE STEP 2nd Basic condition for obtaining a patent In the KSR decision, the US supreme court adopted a broad and flexible approach of “common sense” for combining prior art publications Art 56 EPC An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.

WHAT CAN BE PATENTED ? Machines Articles of manufacture Compositions of matter (e.g. chemical compositions) Processes (i.e. methods) WHAT CANNOT BE PATENTED ? Laws of nature (e.g. E = MC²) Physical phenomena (e.g. new mineral) Abstract mental ideas and processes (e.g. algorithms)

PATENT Provides an exclusive right granted by a state to prevent others from selling, making or using the patented invention Does not give the proprietor of the patent the right to use the patented invention !!! The word patent originates from Latin and means "to lay open" (i.e. make available for public inspection)

0 1y1y1y1ypatentpatent patent patent 0patentpatent patent patent 1y1y1y1y PCT treaty 2.5 y Paris convention 0 PCT treaty 2.5 y patentpatent patent patent 0 patent “State of the art”

0 patent Priority date Jan Patent pending Search & Exam years (in US) Patent granted Patent rejected (in US) ~ 1 year Patent in force 18 month publication Patent publication 20 years

Intellectual Property (IP) a general term for “products” that result from creations of the mind Trade mark DesignCopyrightPatent …

MILK Design ? Star drink Trade mark ? Patent for product ? Patent for process ? Public display File Patent application File Design (US EP...) File Trademark 1Y

First opening Liner

Jan Jan PCT Jul Paris convention Where to file first if US is important market for you ? Jul month publication I file an app. in Lithuania that describes embodiment `B` 35 U.S.C. 102(a) A person shall be entitled to a patent unless the invention was … described in a printed publication … before the invention thereof by the applicant for patent Competing app. filed in US claims embodiment `B` Aug ILEP MX US Between: Jan & Jan US Competing app. filed in US claims embodiment `B` 35 U.S.C. 102(e) A person shall be entitled to a patent unless the invention was described in … an application for patent … filed in the United States before the invention by the applicant for patent

Where to file ? Priorityfiling 1y1y1y1y PCT 2.5 y Paris convention patent Priorityfiling Where I sell or manufacture Where I want to litigate Spain France Germany German courts hear more patent infringement cases than those of any other European country. The District Court of Düsseldorf, in particular, has an excellent reputation internationally for its expertise and the quality and predictability of its decisions. Europe Australia IsraelUSA

0 Search & Exam Patent granted Patent rejected

“The Patent system is designed to ensure the best possible quality of examination; however it has its limitations. The founders of the patent system have therefore instituted procedures that are aimed to improve the system. When market forces are of an opinion that there is room to re-consider the grant of a patent then the required resources will be invested to oppose the patent, and from that time the patent will be examined in a more detailed manner …” (recent decision of the Israeli patent registrar)

Catalogue published during 2001 Patent: Filed in 2002, and Granted in 2007

3rd party observation opposition 3rd Party Submissions Protest Re-exam Opposition Re-exam AU EP US

FILE Invention A FILE Patent First to file system (in most countries) First to invent system (in US) Conception of invention A Two inventors file applications for the same invention ? What happens when... Patent laboratory notebook is essential evidence of the date of conception !!! Use a book with permanently bound pages ! Spiral or comb bound books are not suitable for use in court ! Make all entries in ink ! time Conception of invention A

In 1874, telegraph message traffic was rapidly expanding A need emerged to transmit several messages on a single line Western Union contracted several inventors to find a solution Bell, a teacher of deaf pupils, was also experimenting in this field THE RACE TO THE PATENT OFFICE Elisha Gray Alexander Graham Bell With support of wealthy patrons Bell accelerated his experiments Both Bell & Gray were successful in their experiments The story of the invention of the Telephone The inventor Elisha Gray was one of these inventors

Both filed applications on the same day: 14 February 1876 Popular belief is that Bell filed several hours earlier Gray application Bell application Gray abandoned his patent application which allowed Bell to get the patent

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