DL-170 – WIPO SHORT

ESSENTIALS OF PATENTS COURSE

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 1. INTRODUCTION TO PATENT LAW
1.1 Patent, invention, and discovery
 Patent vs. invention: patents are granted for inventions
 Patent vs. discovery: discoveries per se are not patentable

1.2 Main reasons for patenting

 Patents provide exclusive rights
 Through these rights one might establish a strong market position
 Obtain a higher return on investments
 Possibility to license or sell the invention
 Increase in negotiating power
 Build a positive image for your enterprise, based on expertise, specialization
and technological capacity
 Avoid competitors taking advantage of your invention
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1.3 Role of the patent system in promoting
innovation and economic growth

Currently available trend data

indicates a growing activity in the
patent marketplace, partially as
an outcome of increasing role of
patents.

For example, there appears to be

a co-relation between the trend in
resident applications, GDP and the
level of R&D expenditure.

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2. CORE PRINCIPLES OF THE
INTERNATIONAL PATENT SYSTEM
2.1. Core Treaties:

• Paris Convention for the Protection of Industrial Property (PC)

• Trade-Related Aspects of Intellectual Property Rights (TRIPS)

2.2. Administrative treaties:

• Patent Cooperation Treaty (PCT)

• Strasbourg Agreement concerning the International Patent
classification [Strasbourg Agreement]
• Budapest Treaty on the International Recognition of the Deposit
of Microorganisms for the purposes of patent procedure
[Budapest Treaty]
• Patent Law Treaty (PLT)

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2. CORE PRINCIPLES OF THE
INTERNATIONAL PATENT SYSTEM
National treatment

Articles 2 and 3 of the PC and Article 3 of TRIPS

Most favorite nation (MFN) treatment

Article 4 of TRIPS

Independence of patents

Article 4bis of the PC

Right of priority

Article 4 of the PC

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3. PATENTABILITY: FORMAL
REQUIREMENTS

First step: filing a patent

application with a patent office

Steps taken by the patent office:

• a formality examination;
• a substantive examination; and
• the grant and publication of the patent.

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3. PATENTABILITY: FORMAL
REQUIREMENTS
a request Parts of a patent
application
a description

a claim

an abstract

one or more drawings (if necessary)

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4. PATENTABILITY: SUBSTANTIVE
REQUIREMENTS

PATENTABLE NOVELTY INVENTIVE STEP OR INDUSTRIAL

SUBJECT MATTER NON-OBVIOUSNESS APPLICABILITY OR
UTILITY

SUFFICIENT UNITY OF CLAIMS STRUCTURE PROVISIONAL

DISCLOSURE OF THE INVENTION AND PATENTS
INVENTION INTERPRETATION

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 discoveries of materials or substances
already existing in nature;

scientific theories or mathematical

methods;

mere aesthetic creations (which may be

protected by industrial designs or
copyrights)

schemes, rules or methods for

performing mental acts, playing games
or doing business as such;
4.1. Patentable
subject matter: programs for computers as such.
not inventions
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inventions the exploitation of which is
contrary to public order or morality,
such as public health

diagnostic, therapeutic and surgical

methods of treatment for humans or
animals (but not products for use in such
methods)

4.1. Patentable
plants and animals other than micro-
organisms, and essentially biological subject matter:
processes for the production of plants
or animals other than non-biological
and microbiological processes
excluded from
patentability
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 4. PATENTABILITY: SUBSTANTIVE
REQUIREMENTS

Novelty Inventive step (or non- Industrial applicability

obviousness) (utility)
Prior art Clear distinction between Examples:
Key: not to disclose the invention state of the art and the • Those which appear to
to the public prior to filing a claimed invention contravene the laws of nature
patent application (for example, a perpetual
motion machine);
Grace period • Those concerning methods that
could be considered to fall
entirely within the private or
personal sphere.

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SUFFICIENT DISCLOSURE OF THE INVENTION

UNITY OF INVENTION

CLAIMS STRUCTURE AND INTERPRETATION

PROVISIONAL PATENTS

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 Patent rights and their exceptions and
limitations
• private and/or
noncommercial use;
• experimental use and/or
• an inventor or his sucesor scientific research;
• any natural or legal person • extemporaneous
Who has the • employees or independent consultants preparation of medicines;
right to a – rules vary depending on the country • prior use;
patent? Exceptions • use of articles on foreign
vessels, aircrafts and land
and vehicles;

• “negative right” to prevent or exclude

limitations • acts for obtaining
regulatory approval from
others from making, using, offering for
sale, selling or importing for those
to patent authorities;
• exhaustion of patent rights;
Rights conferred purposes the patented invention
without the patentee’s permission
rights • compulsory licensing and/or
government use; and certain
by a patent use of patented inventions
by farmers and breeders

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 5. THE DIFFERENT LAYERS OF PATENT
PROTECTION
National: usually first filed in the home
country of the inventor

Regional: obtaining one patent or

applying harmonized patent rules for a
limited number of countries [EPO; EAPO;
ARIPO; OAPI; GCC; Andean Community]

International: procedure to seek patent

protection for an invention simultaneously in
each of many PCT contracting states [Patent
Cooperation Treaty]

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6. WAYS TO PROTECT INNOVATION
Utility models • Less strict requirements. Lower or absent inventive step or non-

(petty patent obviousness

• Shorter term of protection

or innovation • In some cases, no substantive examination.

• Less expensive
patent) vs. • Possibility to convert patent to utility model in some cases
• In some countries, they might be limited to certain fields of
Patents technology and only for products not processes

Trade secrets • Unlimited term of protection, if kept secret

(undisclosed • Requirements are that the information is secret, has commercial
value for being secret, and has been subject to reasonable steps
information, to keep it secret
• Knowledge associated to a patent may be protected as a trade
TRIPs art 39) secret
• Confidentiality and non-disclosure agreements are essential for
vs. Patents their protection

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 Enforcement of
patent rights [civil
Procedures before court procedures;
the patent office patent rights
(pre-grant, post- enforcement; validity
7. GRANT OF grant) and infringement of
a patent; cost of
PATENTS AND patent litigation]

ENFORCEMENT
RULES Remedies WIPO Arbitration
[interlocutory and Mediation
injunction; final Center: Alternative
injunction; damages IP dispute settlement
or account of profits]

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8. PATENT FLEXIBILITIES AND
DEVELOPMENT GOALS
The concept of development
Economic
Social and cultural
Scientific and technological

Economic objectives of IPR protection:

To promote investment in knowledge creation and business
innovation by establishing an exclusive rights regime to deal
with newly developed technologies, goods and services.
To promote widespread dissemination and sharing of new
knowledge by encouraging right holders to set down their
inventions and innovative ideas in publicly accessible records.

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8. PATENT FLEXIBILITIES AND
DEVELOPMENT GOALS
Cluster A: Technical
assistance and Cluster D: Assessment,
capacity-building evaluation and impact
studies

Cluster B: Norm-setting, WIPO Cluster E: Institutional

flexibilities, public policy
and public domain Development matters including mandate
and governance
Agenda
Cluster C: Technology
transfer, information and Cluster F: Other issues
communication
technologies (ICT) and
access to knowledge

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8. PATENT FLEXIBILITIES AND
DEVELOPMENT GOALS
Flexibilities in the Paris Convention:
• Scope of patent rights
• Minimum standards of patents
• Use and enforcement; such as compulsory licensing and government use; and exhaustion
of rights.
Flexibilities in the TRIPS Agreement
• Scope of patent rights
• Health-related inventions
• Essentially biological processes
• New plant varieties
• Exceptions based on ordre-public and morality
• Unintentional infringement
• Compulsory licenses
• Research and experimental exceptions
• Control of abusive patent practices

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9. EMERGING ISSUES IN PATENT
LAW
Science and
technology policy
and patents
A few landmark Transfer of
cases technology from
• Software patenting
universities to
• Gene patenting private sector

Standards and Quality of

patents patents

Tragedy of anti-
commons

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