INTERNATIONAL COMPARATIVE PATENT LAW July 16, 1996 Professor Hans Goldrian a seyboldt summary FPLC-IPSI Summer 1996 Semester all rights reserved ÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍ - Right to Patent - Exclusions from patent - 3 basic req'ts Novelty, non-obviousness, utility - technical character ÚÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄ¿ ³ Right to Patent ³ ÀÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÙ First to Invent - patent granted to first and true inventor --------------- C1 C2 CRTP2 CRPT1 ÃÄÄÄÄÄÄÄÄÄÄÄÄÅÄÄÄÄÄÄÄÄÄÄÄÅÄÄÄÄÄÄÄÄÄÄÄÄÄÄ´ ÀÄÄÄÄÄÄÄÄ diligence ÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÙ = interference Inventor #2 wins if inventor #1 cannot show diligence Foreign inventor used to be unable to rely on conception date for priority, but GATT allows a foreign inventor to rely on foreign conception date. It is unknown how this plays through US discovery First to File - two independent inventors, the first to file wins ------------- Safeguards: - illegal taking Art 61 EPC rightful owner may file claim before patent issues and has a choice of three options - continue with the application as it is - file a new application (designate new countries) - discontinue application & withdraw from consideration Advantages: - no time consuming interference except in illegal taking - more incentive to file quickly - quicker disclosure w/18 month publication - no submarine patents PCT accepts both F/T/F and F/T/I final grants being made by individual country's office Free Invention -------------- made by employee outside of work context. No obligation to offer to employer. Service Invention ----------------- made by employee in context of employment, automatically owned by employer. Invention based on experiences in company, under order from company, as employee. German Employed Inventors Law ----------------------------- Employer does not automatically have rights to invention. Inventor's award calculated by statutory scheme. Company, if German payroll, is bound to the statute. ÚÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄ¿ ³ Exclusions from patent ³ Statutory subject matter ÀÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÙ - discoveries, scientific theories, mathematical methods these do not promote technology, they merely observe something already present - aesthetic creations - these are covered by design pat/copyright - schemes, rules, methods for performing mental acts, either in the playing of games or the doing of business. - programs per se for computers are expressly excluded from patent protection in European Convention countries. Computer program may be an element of an invention. Core Theory: if a program is used to control a process, divide teaching into tangible (technical) part and program (non-technical) part. The invention must lie in the technical part. US new program makes the computer a new machine \ But not US a computer readable memory containing patented > in EPO software is patentable / EPO phrase invention to resolve a technical problem - physical change - chemical change - done automatically wo/human - presentation of data/information and databases - method of therapy or diagnosis (EPO only) - particularly in developing countries, pharmaceuticals are covered w/transition periods ÚÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄ¿ ³ Requirements for patentability ³ ÀÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÙ Novelty ------- relative novelty absoulte novelty ---------------- ---------------- any publication, anywhere in the world ditto will destroy novelty public use, domestic public use, anywhere public presentation, domestic presentation, " Full Contents Approach ---------------------- the description, claims, and drawings in a first patent application are references against a second patent application, even if the first patent application does not later issue. EPO Full contents approach is not used to analyze inventive step US Full contents approach IS used to analyze inventive step, but only if the first patent issues Inventive Step -------------- - commercial success - difficulties overcome - this invention makes easy doing a certain work - satisfies long felt need - failure of others to solve problem - unexpected effect - contrary to ordinary teaching Industrial Applicability ------------------------ any industry, including agriculture Claim Language -------------- EPO means for is rejected as vague, although may substitute a physical word, e.g., in painting, "an applicator" EPO may include equivalents in one claim US may not include equivalents, except Markush groups EPO requirement for Jepson style claim preamble give state of the art, field of technology invention is "characterized by . . ." new features - opens argument of where an element belongs + provides easier searching by examiner ÚÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄ¿ ³ Unity of Invention ³ ÀÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÙ Categories of Apparatus, process, and use claims must be linked by a common inventive concept Strict requirement in EPO, US counterpart is restriction reqt Multiple independent claims w/in a category are a red flag Courts will not entertain "no unity" as a grounds for invalidation EPO description is modified to correspond with claim modifications so that the description does not appear as a grant of a broader claim ÚÄÄÄÄÄÄÄÄÄÄÄÄ¿ ³ Opposition ³ ÀÄÄÄÄÄÄÄÄÄÄÄÄÙ Opposition must be raised within 9 months of EPC grant of patent. three possible outcomes - maintain - restrict - nullify ÚÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄ¿ ³ Prior User Right ³ ÀÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÙ Under F/T/F system, a user who has made a non-public prior use, before the filing date, in the protected territory, has the right to continue. If the use was public, it is included in the state of the art and destroys absolute novelty. User or making effective and serious preparations in good faith Before the application date Within the territory For the purpose of his enterprize Has the right to continue using, but only the right to USE US If not expressly claimed, then granted to the public DE The court protects the general inventive idea, and used to sometimes protect an idea not expressed in a claim - now, with harmonization, equivalents are protected, but the idea must be expressed in the claim ÚÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄ¿ ³ Paris Convention ³ D1 ÀÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÙ Signatories honor priority/filing date for one year Defines Industrial, but does not define Novelty of Inventive Step does not prescribe Term, Stautory matter Inventor has the right to be mentioned Inventor may divide his application Art 2 - forbidden to treat foreigner worse than national Art 3 - if domiciled or operating a real & effective establishment in a country, then treat as a national Art 4 - First application = first application in any member country ÚÄÄÄÄÄÄÄÄÄÄÄÄ 1 year ÄÄÄÄÄÄÄÄÄÄÄ¿ ÀÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÁÄÄÄÄÄÄÄÄÄÄÄÄÄ d ÄÄÄÄÄÄ> a b c ÀÄÄÄÄÄÄÄ term ÄÄ> a= Person "X" applies in non-member country From a-b, "X" must avoid any publication or lose patent right in absolute novelty countries b= Person "X" applies in member country Now "X" may publish and not affect novelty or priority c= Person "Y" applies in member country Full contents of "X" application may be used to invalidate "Y"'s right to patent d= Person "X" applies in a different member country and has the benefit of date "b" for priority. Caution: if country 2 has absoulte novelty you're dead Plus: patent term in country two begins a year later If the first application is withdrawn or abandoned or refused and not made public and not used as the basis for priority, it disappears. A subsequent application then becomes a first application. Art 4q - patent not refused on grounds that article is subject to restriction under domestic laws, e.g., pharmaceuticals Art 5 - a country may require compulsory licensing Pharmaceutical - big invenstment to develop - cheap to manufacture - tend to import rather than mfr in target so, not obliged to mfr in target Paris Union \ BIRPI --> WIPO Berne Conve / WIPO Draft additions to Paris Union E17 ----------------------------------- - novelty - inventive step - statutory matter \ Not Harmonizable - rights of patent owner \ at this time - F/T/F / - grace period / ÕÍÍÍÍÍÍÍÍÍÍÍÍÍ͸ ³ GATT / TRIPs ³ E77 ÔÍÍÍÍÍÍÍÍÍÍÍÍÍ; NAFTA = 1992 rehearsal of GATT/TRIPs A requirement for entry into WTU Includes rules for enforcement of agreements Includes Patent, Copyright, more IP Defines statutory subject matter Sec 5 Art 27 No provision for compulsory sharing know-how Part III court rules for evaluating patent are reasonable, but are not binding on any nation's courts Art 41-50 E92 Does not address exhaustion E78 ÕÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍ͸ ³ Patent Cooperation Treaty ³ F1 ÔÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍ; A patent FILING system, not granting system Filing PCT close to 1 year after filing national saves priority for all designated countries ISA -> a list of prior art IPE -> substantive patent examination Not all members are uniform in accepting novelty, inv step (except Chapter II signatories) File national then file PCT w/in 12 months F6 File PCT and national at same time F8 International Search Authority ------------------------------ Absolute novelty Written disclosures only all written disclosures before PCT filing, not just priority Evidence of oral disclosure before PCT file date Material published after, but filed before PCT file date Provisional Protection ---------------------- Some countries allow damages from the time a patent application is published, provided the application matures into a patent and the claim in the 18 month publication corresponds with the granted claim and with the "infringing" use. International Preliminary Examination ------------------------------------- Applicant decides whether or not to have the IPE If decision is NOT, 20 months start national phase Chapter II (not all countries have signed on to this) Demand for prelim exam must be filed with IPEA Rule 59 Elected states = countries within which you want to have an examination done. Only designated countries. Only countries that subscribe to Ch II Only applicant that subscribes to Ch II Unity of invention Rules 13, 40 If no unity, no search on secondary inventions May protest at ISA IPEA may request additional examination fees May protest IPEA May protest division Rule 40.2 May amend application Art 34 Rule 66.1 At ISA one time At IPEA one time after "OA" Rule 66.4 After IPEA Rules 52, 78 Fatal defects in demand - applicant not eligible - didn't elect - not within a competent IPEA - later than 19 months ÕÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍ͸ ³ European Patent Convention ³ G1 ÔÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍ; Common patent GRANT among member countries Central and common GRANT procedure National stage is a ministerial act "EPO" may be a designated state in a PCT application Board of Appeals hears formalities, unity, other decisions made in search/exam/opposition proceedings Non-inventor files, inventor may challenge in a national court Action that invention was taken illegally by applicant If inventor wins, EPO gives a choice: \ - stop/refuse patent \ see protocol on - prosecute as-is \ recognition G96 - stop/file fresh application \ There are BINDING court rules for national courts regarding patents granted by the EPC, although within those rules there are degrees of interpretation over matters such as inventive step. Within the EU is an agreement that facilitates determination of venue of patent litigation as well as the reach of the court's holding. Dutch courts are most agressive in extending reach, for example holding that an infringer must cease activity in Germany and France besides in the Netherlands. ÕÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍ͸ ³ Claim Construction and interpretation ³ G20 ÔÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍ; US EPO ------------------------ --------------------------- best mode one mode enabling sufficient disclosure skilled in art wrt/enable hypothetical all-knowing obvious person novelty Jepson style required, plus discussion of prob/sol'n EPO practice has description amended to keep pace with claims. If claims are narrowed, e.g., a group of claims is taken out, then the description is modified to avoid mention of that area. ÕÍÍÍÍÍÍÍÍ͸ ³ Novelty ³ ÔÍÍÍÍÍÍÍÍ; - Binding wrt/EPC - filing of Paris Convention priority date - everything written/oral/public use is prior art + conflicting earlier application full contents provided earlier application is published - possible 6 month grace for disclosure against inventors wish ("abuse"), display at officially recognized exhibition Art 55 G15 - full contents only applicable in matching designated states Art 54 G219 ÕÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍ͸ ³ Inventive Step / Obviousness ³ ÔÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍ; - closest prior art - objective technical problem to be solved - assess problem/solution approach and in light of closest prior art ÕÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍ͸ ³ Right to Patent ³ ÔÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍ; One who feels the applicant is not the true inventor may take a suit in a national court. If he wins, the EPO will honor the national court decision, provided the national court is in one of the EPC designated states ÕÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍ͸ ³ Post Grant breadth of Patent ³ Art 69 ÔÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍ; Equivalents G238 Opposition ---------- Handled by EPO, once opposition period has lapsed, any further proceedings are done on a state by state basis Software patentability G210 ---------------------- G212 EU, real contribution must be technical G273 Second use of a pharmaceutical G221 ÕÍÍÍÍÍÍÍÍÍÍÍ͸ ³ Exhaustion ³ ÔÍÍÍÍÍÍÍÍÍÍÍ; National Exhaustion ------------------- Three countries - X, Y, and Z Two inventors - A transistor patent (dominant over B) A patents is countries X and Y B electronic device using transistors B patents in countries X and Z ÚÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄÄ¿ ³ X ³ ³ a b ³ ÃÄÄÄÄÄÄÄÄÄÄÂÄÄÄÄÄÄÄÄÄÄ´ ³ Y ³ Z ³ ³ a ³ b ³ ÀÄÄÄÄÄÄÄÄÄÄÁÄÄÄÄÄÄÄÄÄÄÙ In country X, "B" must seek license of "A" or buy from "A" in X In country Y, "B" must seek license of "A" or buy from "A" in Y In country Z, "B" may manufacture and sell transistors Add a third inventor, "C", who owns a dominant patent over "A" "C" patent is valid in countries X, Y, and Z Now, "A" needs license from "C" in all three countries "B" is depending on both "A" and "C", that is, if "B" makes a device using transistors made from "C"'s ultrapure silicon without "C"'s permission, then "B" is infringing. If, with permission, once "C" silicon is converted to "A" transistor, the "C" patent is exhausted. Regional Exhaustion ------------------- Same facts as above, but X, Y, and Z are all EU countries If "B" buys from "A" in country X, "B" may work in country Y and in country Z. In country Y, the principle is known as regional exhaustion. Under national exhaustion, "B" is not able to work these specific goods in country Y because "A" has patent protection in country Y and the goods were not bought under "A"'s patent in country Y. What if "B" buys transistors from "D" in a country that "A" does not have a patent? e.g., country Z. Under both national and regional exhaustion, "B" would be infringing if "B" attempted to sell in country X or country Y because "A" has a patent on the transistor in both countries. Regional exhaustion does not extend protection to "A" in country Z unless "A" has a patent in country Z. International Exhaustion ------------------------ Goods sold under patent in any country would be free to roam the world and would not infringe on a parallel patent in any country. This notion is under discussion but is not in effect. ÚÄÄÄÄÄÄÄÄÄÄÄÄÄÄ¿ ³ Infringement ³ ÀÄÄÄÄÄÄÄÄÄÄÄÄÄÄÙ What do you do if you think there is an infringer? - verify that infringement is occuring - check business relations with infringer - notify potential infringer, but do NOT order them to stop. If you order them to stop and they do and later it is found that your patent is invalid, then the "infringer" has a damage claim against you. Say, "I believe I have the right to exclude, here is patent number #####, please advise your opinion and planned reaction." - File infringement suit - in court, in all countries except in China where the first infringement action is in the Patent Office. Suits are under national law and under the "territorial perogatives" of the various national courts. - Defense to an infringement suit is invalidity of the patent - In DE, infringement court does not decide patent validity - Defense to an infringement suit is NON-PUBLIC PRIOR USE - in the country of the patent - cannot expand to other countries - actual use or serious preparation for use (= investment) - makes one exempt from suit. NOT a license. - cannot expand beyond existing non-public prior use GATT enforcement provisions E92 --------------------------- Part III Art 47 - judicial authorites may learn of contributory infringers Art 50 - provisional measures judicial authority may issue preliminary injunction before hearing the case on the merits 20 working days or 31 calendar days, whichever is longer Art 51 - block importaion of infringing goods at the border. ÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍÍ Summer 1994 Exam A = resident of GB B = resident of Canada 3/2/93 3/20/93 B invents A invents in Canada in GB 4/12/93 4/xx/94 A files A files US EPO=GB&DE 5/18/93 B files US CA, EPO=GB,DE,FR Q: Who can establish an earlier conception date in US? A: B can establish an earlier conception in the US because on 5/18/93 NAFTA provided that the US would recognize inventive acts in a NAFTA country. Furthermore, B can establish the right to the US patent provided B can show diligence from conception to filing, which is also known as constructive reduction to practice (CRTP). Q: In which EPC countries can who get a patent? A: A can get patents in GB and DE because A was first to file provided A is a true inventor and has not stolen the invention B cannot get an EPO patent becuase A filed for an EPO patent before B did, however B can get a national patent in France because Article 60(2) of the EPC provides that first to file shall only have effect in the countries designated in the EPO application and because A's application has not yet been published, so absolute novelty has not been destroyed. Q: Can B get a Canadian patent? A: Yes, B is first to file in Canada. 1/12/93 2/11/93 2/8/94 A delivers A files US A files JP, EPO public speech Q: can A get a US patent? A: Yes, less than one year has elapsed from disclosure to application and there is no disclosure by other than the inventor Q: can A get a Japanese patent? A: No, absolute novelty was destroyed on 1/12/93 Q: can A get a European patent? A: No, absolute novelty was destroyed on 1/12/93 12/91 5/92 A, DE company A mfg product invents 1/92 7/92 6/93 B, US company B files US B files invents EPO=DE,FR,BG claims 7/92 priority Q: can B get the patents? A: Yes, even in the US, even if A has invented first and made no effort to patent his invention, rather appeared to attempt to conceal his patent. Q: If B can get the patents, has A any possiblity to continue manufacture and sale of the product? A: No, prior user right only covers USE, not sale of an invention. Q: If A does have possibility to continue, in what countries? A: Prior use rights, as applied to a process or method, may not be expanded beyond the use in place or contemplated at the time B files a patent application in the country where the prior use is in place or seriously contemplated, i.e., investment has actually been made. In this case, the prior use, if it were USE and not SALE, would be frozen in 6/93 when B filed in DE. Name the earliest truly international convention, still in force, that give an accepted definition referring to: Q: Novelty A: PCT Art 33(2) for CH II members Rule 64 Q: Inventive Step A: PCT Art 33(3) for CH II members Rule 65 Q: Industrial Applicability A: Paris Convention Can a national non-member of the Paris Convention enjoy: Q: National treatment in a member country? A: yes, if domiciled or having real and effective enterprize in member country. Art 3 Q: Convention priority in member countries? A: yes, must file in member country. Art 4 A.(1) Q: What does it mean that a country is "bound by Chapter II"? Relate to Procedures, Time Limits, and Result A: Chapter II refers to Chapter II of the Patent Cooperation Treaty, or PCT. This Chapter deals with the International Preliminary Examination Authority, a substantive examination similar to the examination given in a national patent office. The IPEA decision of patentable is NOT binding on national offices, but in practice it carries great weight. Applicant must demand the examination within 19 months of the application priority date. The examiner has time limits prescribed by Rule 69.2 28 months from priority date if demand was before 19 months 9 months from start of IPE Q: A, a US company, wants to file a PCT application and to choose the EPO as both ISA and IPEA. What steps, if any, can be handled by company A's patent department? A: Any agent competent to practice before the US PTO may practice before both the ISA and IPEA, provided the application was filed in the US office. Article 49. Q: The EPO as ISA finds that the application contains more than one invention and invites A to pay another search fee. A does not want to do that. What happens to the second invention in this application? A: It is not not searched, so the search report comes back with a search on only the first invention. The second invention is still available, the PCT/ISA lack of unity decision is not binding at the national stage, but the national offices will not have the benefit of an ISA report on the second invention. Q: The PCT and EPC both comprise a number of comparable procedural steps. Which ones? A: Designated countries G175 Q: Name some features of the EPC which the PCT does not include. A: Binding examination G175 Q: Which measures can a competitor take against a patent or patent application prosecuted under the PCT? under the EPC? A: EPC: May sue in any national court cliaming that the invention is his. The EPO will honor the decision of the national court if it finds that the competitor is right. This may be done at any time, but typically is done after 18 month publication. May bring opposition proceedings after grant. May sue for invalidity on a state-by-state basis after grant and after opposition proceedings. Q: A, a US company, decides in the last minute to file a European patent application. The company has no reliable European patent application. A's in house patent agent is of the opinion that there are two ways to save the priority date. Is he right? A: Minimum material to file before priority ends description, claims, Abandon US application and never refer to it again so that a later application will become "the first" The EPO Board of Appeal are the highest instance deciding on grant or rejection, both in examining and opposition stages. Do you have any possibility for further action if you are Q: An applicant or patentee? A: No Q: An opponent A: Yes, you may challenge the validity of the patent in national courts. Q: Besides having designated a number of countries members of the EPC, it is possible to prosecute national applications in the same countries in parallel. What could be the reasons for doing that? A: Stategic move in case opposition attacks the EPO patent via opposition, the loss of the EPO patent will not, of its own, be fatal to your overall effort. Ability to appeal an adverse decision to a judicial authority on the national application. The right to a jusdical proceeding is absent from EPO proceedings Q: You can apply for a European patent the "Euro-PCT-way". What is the most remarkable advantage of such approach? A: A national designation on the PCT is deemed to be a regional G244 designation Q: Define briefly what is meant by "Border measures". A: GATT, Part III, Section 4, Articles 51-60 E96 Art 51, block the importation of infringing goods Q: Define "national, regional, and international exhaustion" and give examples where it applies. A: Exhaustion is a doctrine that applies to products, not to patent rights, and involves determining whether a given unit of product infringes on a patent that covers that product. National exhaustion is the notion that once a given unit of product has been put into service in a non-infringing fashion in a given country, that the patent owner cannot sue a subsequent purchaser for infringement.