Most people think of patents in
relation to major scientific breakthroughs such as Edison’s first electric lamp
or large corporations investing large sums in research and development. In fact,
there are approximately 750,000 patents granted around the world every year.
Though many of these relate to the same inventions being patented in many
countries, it is hard to imagine that so many scientific breakthroughs are being
developed every year. Most patents are granted for less significant inventions
including improvements that make the products or processes more efficient or
more marketable. In addition, certain countries have specific legal provisions
for protecting rather incremental innovations under the form of
utility models (also referred to as “petty or innovation patents”) which
have a shorter duration than patents and are generally easier to obtain.
While it is certainly true that not
all enterprises develop patentable inventions, it is a misperception to believe
that patents only apply to complex physical or chemical processes and products
or are only useful to large corporations. Patents may be obtained for any area
of technology from paper clips to computers. There already exist thousands of
patents for simple everyday products such as pens, glass bottles, textile
fabrics, or bicycles.
How Much do Patents
The costs of patents may be divided
into four types of costs.
Firstly, the costs relating to the
application fees and other prosecution fees paid to the national or regional
patent offices. Such costs may vary widely from country to country (information
on the fees may be obtained directly from the
national IP offices)
and are typically lower than the other costs referred to below. Secondly, the
costs relating to patent attorneys/agents who assist in drafting the patent
application. While the use of a patent attorney/agent is usually optional
(unless the applicant is not residing in the country and the law requires that
he be represented by an attorney or agent admitted in the country), it is
generally advisable to seek legal advice when drafting a patent document. Patent
attorney fees will vary significantly from country to country. Thirdly, costs of
translation. Such costs are only relevant when seeking IP protection in foreign
countries whose official language is different from the language in which the
application has been prepared and may prove to be high, especially for highly
technical patent applications. Fourthly, the cost of maintaining applications
and patents through payments to the patent office. Such fees are usually paid at
regular intervals (e.g. every year or once every five years) in order to
maintain the application or the patent. Protecting patents for the entire term
of protection (in general, 20 years) in various countries may prove an expensive
undertaking, also taking into account that annual maintenance fees are usually
increasing the longer the protection is maintained. Such costs (see
help desk) would have to be compared to the wide range of benefits
that could derive therefrom (see “How
do you Turn Inventions into Profit-making Assets of Your SME”). For SMEs
willing to apply for patent protection in various countries, the service offered
by the WIPO-administered PCT system may
considerably reduce fees and simplify procedures.
Do I Need a Patent
Attorney/Agent to Prepare and File a Patent Application?
Applicants may prepare their patent applications and file them without
assistance from a patent attorney. However, given the complexity of patent
documents and the legal skills required, it is highly advisable to seek legal
assistance from a patent attorney/agent when drafting a patent application.
Furthermore, the legislation of a country may require that the applicant whose
ordinary residence or principal place of business is outside the country be
represented by an attorney or agent admitted (which usually means, resident and
practicing) in the country. Information on the admitted attorneys and
agents may be obtained directly from the
national IP offices.
How Long Does it Take to Obtain a Patent?
The time required for a patent to be
granted will depend on the registration procedure and a number of other factors
that will vary from country to country. In countries where no examination as to
the substance of the patent application is conducted, the procedure will
generally be relatively fast (it will usually be registered within a few
months). However, in countries where the patent office conducts a thorough
substantial examination to check whether the patent meets the patentability
criteria of novelty, inventive step and industrial applicability, the entire
procedure from application to grant will generally take over 12, and in many
cases over 18, months. It should, however, be noted that the procedure may take
longer, particularly wherever the law provides for opposition proceedings prior
to the grant of the patent or where the law allows for so-called deferred
examination (i.e., the patent will only be examined upon a corresponding request
to be filed within a certain period of time which may be several years).
On the other hand, the deferred examination system gives an applicant more time
to decide whether his invention is worth patenting in view of the possibility of
commercialization and the costs involved to obtain a patent.
Are Patent Applications
Disclosed to the Public?
Patents are granted by patent offices
in exchange for a full disclosure of the invention which is thereafter published
thus becoming available to the general public. Publication, however, may take
place at different stages of the procedure. In some countries, the patent
document with the patent claims and the description of the invention is only
published at the time of grant. In other countries, patent applications are
published generally 18 months after the filing date or, where priority has been
claimed, the priority date (for more detail on your country’s procedure for
patent application, check your country’s
Employee has Invented a New Product or Process. Who Will
own the Rights to the Patent?
In most countries, if an
employee has developed an invention in execution of his employment contract,
i.e., usually during his working time within the enterprise, the invention (and
the related patent rights) will belong to the enterprise. To avoid confusion and
possible disputes, employers often specify issues of IP ownership in employment
contracts. Depending on the merits of the case, the employee may, however, have
a right to equitable remuneration in accordance with legislative provisions or
his employment contract.
Are Patents Renewable or may the Term of
Protection be Extended?
The term of protection under most
modern patent laws is 20 years from the filing date of the application.
However, in some countries, the term of protection may be renewed or extended
for applications in certain fields, such as pharmaceuticals or foodstuffs, which
need to undergo an administrative approval procedure before they can be put on
the market and, therefore, the patent owner could not enjoy his right, in
certain cases, for a considerable period of time after the grant of the patent.
If my Patent Application is
Published Before a Decision Whether or not to Grant a Patent is Taken, what
Protection do I have?
Once your patent application has been
published before a patent is granted, you have the right, under most patent
laws, to take legal action against infringing acts. However, you can bring such
an action only after the patent is granted and if you can prove that the act in
question would have infringed the patent.
It often happens that many people are
working at the same time to find solution(s) to a particular technical problem.
However, only one of them can be granted a patent for the same invention and
most countries follow the so-called first-to-file-system in granting that patent
to the one who filed the application first. When you are seeking patent
protection for the same invention in several countries, the principle of
priority is very useful since you do not have to file your application in
several countries at the same time. The Paris Convention for the Protection of
Industrial Property provides that once you file an application in one country
party to the Convention, you are entitled to claim priority for a period of
twelve months and the filing date of that first application is considered the
“priority date." Therefore, when you apply for protection in other member
countries (of the Paris Convention) during those twelve months, the filing date
of your first application is considered to have “priority” over other
applications filed after that date. In such a case, you still succeed in being
the first-to-file in other member countries, even if there are other
applications filed before the filing date of your application in those