1. GENERAL INTRODUCTION
THE PATENT SYSTEM

2. General Introduction of the Patent system: From Idea to Grant
What is an invention
Who is an inventor
Means of protection
Procedural phases up to grant
General grant proceure at IPO
Where to file
Filing strategy

3. What is an invention
Creative achievement that enables a concrete and technical solution to a given technical problem
An invention may be in any field of technology, provided it is new, involve an inventive step (non-obvious) and is susceptible of industrial application

4. What is an invention
Patentable inventions in the area of life science, for example:
Proteins and nucleic acids (DNA/ RNA) incl. their use(s), e.g., enzymes having useful functions
Chemical compounds incl. their medical or non-medical use(s), e.g., compounds acting as agonists or antagonis on certain disease related receptors
Genetically modified (micro)organisms incl. methods of productions, e.g., an genetically modified mosquito which, when released into the wild, mates with female mosquitoes to produce sterile progeny
Genetically modified plants, altered to carry a new characteristic, such as resistance to pests or droughts, or enhanced yield
Diagnostic kits and methods, e.g., gene-based breast cancer test

5. What is not an invention
Not regarded as inventions are creative achievments which are either of abstract or non-technical nature, such as:
(a) discoveries, scientific theories and mathematical methods
(b) aesthetic creations and presentations of information
(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers
Exception to c): in US are business methods are patentable inventions

6. Who is an inventor
No universal criteria for the determination of inventorship, rather inventorship is defined by national legislation in each country under consideration.
In the case inventions are made in the course of employment, inventorship from a European perspective is generally determined by the legislation of the country of business of the employer
In some jurisdictions the question of inventorship may not necessarily be determined on the basis of the national legislation of the country of business of the employer, but on the national legislation in the country for which a (national) patent application has been filed (e.g., in US)

7. Who is an inventor
Generally speaking: An inventor is a natural person who has made an independent, intellectual contribution directed at the invention
This can be anyone who:
(a) Conceived the initial idea(s) which define the research led to the invention
(b) Actually devised the experiments or products which form the basis of the application
(c) Carried out any experiments or other processes which required that person to show initiative to conceive and/or complete the invention
(d) Interpreted the data and recognized the significance of results

8. Who is an inventor This will not include anyone who:
(a) Simply carried out work under instruction (regardless of how much skill and effort this took)
(b) Had no part in the research (regardless of whether or not they funded it, were associated with it, owned the facilities which were used in the research , contibuted very general work or assistance)
(c) Was a project manager or supervisor but did not contibuted technically to actual invention
Inventorship and authorship are not the same: co-authors may not necessarily be co-inventors

9. Means of protection
There are generally two intellectual property rights protecting inventions: patents and utility models
Patents:
- for any kind of invention
- examined right
- 20 years of life time (as of the filing date)
Utility model (e.g., in DE, CN):
- for any kind of invention, except methods and non-medical uses
- unexamined right
- 10 years of life time (as of filing date)

10. Procedural phases up to grant
Drafting application
Pre-drafting
Drafting
Filing
Prosecution
Grant
Invention disclosure
Defining subject matter
Novelty Search
Filing application with selected Intellectual Property Office
Formal and substantitve examination of application by IPO

11. General Grant Proceure at IPO
Filing
Receiving
Search
Examination
Grant
Application is filed with the IPO
Application is received, processed and examined as to formal requirements
Prior art search and drawing up Search Report incl. Written Opinion
Substantive examination of application

12. Where to file Patent applications can be filed with:
a) National Patent Offices such as
- Slovenian Intellectual Patent Office (SIPO)
- German Patent- and Trademark Office (DPMA)
- Institute of Intellectual property Luxembourg (IPIL)
b) Supranational patent organisations such as
- European Patent Office (EPO)
- International Bureau (IB)

13. Filing strategy 0 months 12 months 18 months 22 months 30 months
Claim priority of first application
Publication of application
File first (national) application
National prosecution
e.g. in SI, DE, LU, EP
File second (national) application
National prosecution
e.g. in EP, US, JP, CN, KR
Chap I PCT
Enter national phase in e.g. in EP, US, JP, CN, KR
File PCT application
Chap II PCT
Internationl Preliminary Examination
Request for International Preliminary Examination
Search Report

14. Thank you for your attention
Dr. Carsten Prusko / Dr. Hajo Peters /