patents III - getting the patent and the software problem

where to apply for a patent?

NEP

• national patent offices

• european patent office

• patent cooperation treaty

national patent offices

a national patent is valid only in the country where it is granted

• non-residents can also apply

• one year of priority for subsequent applications

european patent office

a european patent is equivalent to national patents in the countries where it is granted - the applicant chooses the countries

it can have the unitary effect but doesnt have to? not sure if i got it right

patent cooperation treaty

• just one application for up to 141 countries

• after the initial application phase the international application leads to multiple national patent examination procedures

international patent?

doesnt exist

the PCT gives one application, not one patent —> it ends in many national ecamination procedures

route 1 to get a patent

national patent

A national patent is valid only in the country where it is granted.

Non-residents can apply as well as residents.

The applicant gets one year of priority for later filings elsewhere

route 2

the european patent office

• The European patent is a bundle of "national patents"

• The legal basis is the European Patent Convention (EPC). Today the EPC has 39 member states, of which 27 belong to the EU.

• The lecturer's warning in the intro class: the EPO is a European office, not an EU office. All EU members are also members of the European Patent Organisation, and the EPO began in 1973.

two organs of EPO

• Administrative Council - the legislative body: made up of delegates from the member states; supervises the activities of the Office; has a specific legislative function.

• European Patent Office - the executive body: responsible for examining European patent applications

route 3 - the patent cooperation treaty

• One application, up to 141 countries. That is the whole point: you postpone the expensive country-by-country choices.

• After the initial phase, the international application "leads to multiple national patent examination procedures". Each national or regional office then examines on its own account, so the protective scope may turn out the same or different in each (lecturer's timeline example).

• The lecturer's timeline example: a first application, a 12 month priority period, then a PCT application;

  • a further stretch takes the total to two and a half years after the first filing (consistent with the slide's 30 to 31 months); the applications are then taken into whichever countries are wanted, for example the US, where the US application is prosecuted by a US patent examiner. The European application is prosecuted before the EPO, and after grant it must be validated in the European states wanted.

mnemonic - FPE

• First filing: the first application filed for the invention.

• Priority: the right to file, within the year (12 months), an application for the same invention that counts as if filed at the same time as the first. The date of the first filing is the priority date.

• Effective date: the earliest of the actual filing date and the priority date. This is the date against which the invention is compared to the prior art.

what the priority date does

• It fixes the effective date. Where a priority is claimed, the effective date is the priority date; otherwise it is the filing date.

• It "controls all the deadlines" for the later steps. The lecturer: "Priority date is the date when we count how long we can claim in other countries: a year, or in case of PCT, 30 months."

• His timeline: file the first application; within the 12 month priority period file the PCT or other applications; the PCT route gives about two and a half years from the first filing before you must commit to the countries (the slide's 30 to 31 months).

• The state of the art for judging novelty and inventive step is fixed relative to the effective date: for inventive step the assessment is the day before the effective date; a prior art document counts from its own publication date, not the effective date.

effective date and the earlier unpublished application

• an application filed before yours but published only after your filing is still counted in Europe for novelty but not for inventive step.

  • When someone files a patent application, the patent office keeps it secret for 18 months before publishing it. Because of this secret period, you might not know that someone else filed a similar idea shortly before you did.

    1. If the earlier document appears BEFORE your patent is granted

    • The Problem: The patent office discovers the secret document and tells you: "Your invention isn't completely new because someone else filed it first."

    • What you do: You amend (narrow down) your patent claims. You remove the overlapping parts and keep only what is uniquely yours so that your idea becomes "new" again.

    2. If the earlier document appears AFTER your patent is granted

    • The Problem: You already received your patent, but a competitor discovers the older document and takes you to court to challenge your patent's validity.

    • What you do: You limit your patent claims in court. You shrink the scope of your patent to protect only the parts that do not overlap with the older document.

    
    

• The one-document principle: novelty is assessed against one document. A direct reference in one document to another lets you read the two together; where a document has several embodiments each is its own information.

Timing of the prior art document itself

• The relevant date for a prior art document, for novelty, is its publication date.

  • The lecturer's example: a Belgian newspaper article from 1967 is judged as of 1967, against a patent filed in 2016.

• Prior art must be available to the skilled person "somewhere in the world, in some language and form". It does not matter whether anyone actually received it.

• The state of the art for novelty is everything known before the effective date;

  • for inventive step the relevant date is the day before the effective date 

priority date

date of the first filing; starts the 12 month and 30 to 31 month clocks

effective date

earliest of filing date and priority date; the reference date for the prior art comparison

figures and periods in patent application

12 months - priority period

• 30 to 31 months after filing: PCT decision window (counted from the priority date)

• 18 months: publication of the application

what does a patent application have to include

BADCD

• Bibliographic information: inventor, proprietor, date of filing, technology class, etc.

• Abstract: around 150 words, as a search aid for other patent applications.

• Description: summary of prior art; the problem to be solved; an explanation and at least one way of carrying out the invention. Biotech inventions: deposit of a sample.

• Claims: define the extent of patent protection.

• Drawings: illustrate the claims and the description

rules attached to filing

• Nothing can be added after filing. "After that point in time you can never add anything to your application." That is why the applicant loads the description with detail.

• The patent application is published; the granted patent is published again. The two publications are different events with different prior art status.

embodiment

one concrete way of carrying out the invention, described in the description

deposit of a sample

for biotech inventions, a physical sample of the material is deposited as part of the application

proprietor

the owner of the patent (bibliographic field beside applicant and inventor)

technical class

classification code that lets patent documents be found and searched

the core idea behind a patent claim

A patent claim is a specified combination of features A, B, C, D, E and so on.

Infringement: the infringing solution must fulfil all the features of a claim. Fewer features means a broader claim: it "reads on" more solutions. Claims are arranged in tree structures with an independent claim at the root.

independent claim

a claim that does not contain (refer to) all the features of another claim. It stands on its own and is the root of a tree.

dependent claim

Dependent claim: refers back ("Method according to claim 1, wherein ...") and therefore incorporates every feature of the claim it depends on, plus additional features. It is narrower by construction.

One application may hold several independent claims, for example a method claim 1 and, much later, a claim 46 that is a system: a different independent claim in another category.

three categories of independent claim

MSP

• Method claim: for example the Amazon claim 1, "A method of placing an order for an item comprising ...", and claim 2 "method according to claim 1".

• System claim: for example the Spotify claim 1, "A system for multi-track playback of media content ..."

• Program product: the allowable form for software at the EPO, "Computer program product, characterised in A, B and C

office action

the examiner’s communication raising objections such as lack of novelty or inventive step

prosecution

the back-and-forth between applicant and examiner, based on office actions, until grant

Key Patent Deadlines (Priority, 12-Month, 30–31 Month Clocks)

• Date of First Filing (Priority Date):

  • The day you submit your 1st patent application.

  • Locks in your priority date and freezes prior art worldwide.

• 12-Month Clock (International Expansion):

  • Deadline to file internationally (e.g., via PCT).

  • Keeps your original priority date in other countries.

• 30–31 Month Clock (National Phase Entry):

  • Deadline to pick specific countries and pay local fees to get actual granted patents.

European Patent Office (EPO) Patent Grant Procedure

1. Filing & Formalities Examination: Application is submitted and checked for formal requirements.

2. Search & Preliminary Opinion: EPO issues the Search Report (EESR) evaluating novelty and inventive step.

3. Publication (at 18 Months): Application becomes public; third parties can submit observations.

4. Substantive Examination: Detailed review of patentability. Outcome: Grant, Refusal, or Withdrawal.

5. Grant & Publication: EPO officially grants the patent and publishes the specification.

6. Validation & Opposition:

   • Validation: Patent is validated in chosen countries (or converted to a Unitary Patent).

   • Opposition Period: Third parties have 9 months from grant to challenge the patent at the EPO.

Search report with preliminary opinion:

the examiners search and cite documents; they usually cite previously published patent applications and patents, because those are classified and searchable, as well as articles, books and other sources.

Publication at 18 months:

before this point the world does not see the application. From publication on, others can read it and the file is open online.

Third-party observations

are possible after publication.

substantive examination

office actions from the examiner, replies and amendments: prosecution. The lecturer's estimate: it "takes a long time"; on the slide roughly 4 to 5 years to grant. Office actions come with reply deadlines.

grant

once the patent is granted it can be enforced, and the competitor learns exactly what it covers.

Applicants may therefore want to postpone grant while the pending application does negotiating work

procedural dates

12 months: priority period for later applications (§18)

18 months: publication of application and search report

30 to 31 months: PCT, latest for cost-bearing country decisions (§17)

approx. 4 to 5 years: filing to grant on the EPO timeline

9 months: opposition period (§22)

1 month from grant: request for unitary effect (§23)

every year: renewal fees

7 (+7) years after UPC start: opt-out window (§23)

formalities examination

the first EPO check of the application, before check

search report

the EPO’s list of prior art documents it found, accompanied by a preliminary opinion on patentability

substantive examination

examination on the merits: novelty, inventive step, and so on

patent specification

the published granted patent text

observations by third parties

comments from outsiders on patentability, permitted after publication

what runs after patent is granted

• Opposition: optional, period expires 9 months on the timeline.

• Validation in the designated states (the "classic" European patent; a bundle of national patents).

• Unitary effect: request to the EPO within one month from grant; no validation (§23).

• Renewal fees: annual. One annual fee for a unitary patent; national renewals for classic validation.

• Attack: national revocation, central revocation at the UPC, or invalidity raised as a counter-suit when you sue.

opposition period

the window after grant, 9 months - in which the grant can be challenged before the EPO

counterclaim for revocation

the defendant’s own claim, in an infringement case, that the patent should be revoked

UPC v. UE

the UPC is a European system but not an EU institution; only EU member states

can be in it. Non-EU European states such as Switzerland, Norway and Iceland cannot be parties.

unitary patent - granting

request unitary effect before the EPO within one month from grant

Unitary protection: one single patent to enforce and defend. 

where do you sue - unitary patent

• Defendants from member states: the action shall be brought at the national or regional division, either where the infringement occurred or where the defendant has residence or place of establishment.

• Defendants residing outside the EU: the action shall be brought at the central division.

• First instance: central division and national/regional divisions. Second instance: Court of Appeal in Luxembourg.

UPC jurisdiction

UPC has exclusive jurisdiction for:

• European patents with unitary effect (UP)

• National validations of European patents, unless an opt-out has been requested

• Supplementary protection certificates based on European patents

UPC opt-out

• Opt-out is possible for all European patents without unitary effect, up until 7 (+7) years after the UPC started.

• Thereafter all granted European patents, with classic validation or unitary effect, will be handled by the UPC for the participating member states.

• a classic EPC patent can go "No UPC: opt out" or "UPC: stay in"; a unitary patent has "UPC: no other option".

The lecturer: you do not opt out as a country, you opt out per patent. Some of your patents can be inside the UPC and others not. 

so after European grant you choose:

• Classic validation: bundle of national patents; UPC jurisdiction unless you opt out.

• Unitary effect: request within one month of grant; UPC is the only forum; one annual fee.

• Opt-out: only for classic European patents, until 7 (+7) years after UPC start; can be withdrawn once.

opt-out

declaration that a classic European patent is kept outside the UPC’s jurisdiction, per patent

unitary effect

the status a granted European patent gets when requested within one month: one patent across the participating states

what is a computer-implemented invention

An invention involving computers, computer networks or other programmable apparatus, whereby at least one feature is realised by means of a program

what is required to obtain a patent

invention

industrially applicable

novel

inventive step

an invention

• The invention needs to be in a field of technology. The larger solution in which the invention is applied can be in a non-technical field even if the invention itself is not.

• The invention must define a technical solution to a technical problem.

• It must be defined in terms of at least one technical feature, which gives it "technical character".

• It must be defined in a sufficiently concrete way: not "abstract". The skilled person reading the claim needs to be able to know what to do in practice.

• The assessment of whether there is an invention is made without considering prior art. A completely conventional idea is an "invention" if it is technical.

novelty

Novelty is determined claim by claim. A claim is novel when it is not known from one single prior art document.

"Known" means the document teaches all the features of the claim in question.

A prior art document 

A prior art document is an information source available the day before the effective date (filing or priority date), part of the state of the art. It is available if it was (hypothetically) made available to the skilled person, in any language and format, anywhere in the world. The relevant date is the publication date of that document.

Examples of prior art documents: patent publications (applications and patents); articles; books; offers and invoices; posts on social media or homepages; oral presentations; use or sale.

CII

invention involving computers, networks or other programmable apparatus, where at least one feature is realised by a program

technical character

what an invention has if defined by at least one technical feature; needed for it to count as an “invention”

as such

the exclusion catches the bare category only

Comviq

Any claim with at least one technical feature is technical. Technical character does not depend on the prior art.

The rule is that all claims having at least one technical feature are technical. Pen and paper = technical but notoriously known.

Technical character does not depend on the prior art. Instead the question of technical character moves to the inventive step analysis.

Which features are technical?

1. Technical, as such:
   Features that do not belong to the accepted categories, such as:

• discovery

• scientific theories

• mathematical methods

• aesthetic schemes

• rules

• methods for performing mental acts

• playing games or doing business

• programs for computers

• presentations of information

2. Features that interact with other features to achieve a technical effect.

   1. It's assessed in the context of the invention as a whole.

   2. Groups of features that interact to achieve a common technical effect.

   3. Example: an interactive graphical user interface with information presented on screen that changes because of user input. Normally at least one of the interacting features is technical as such.

Which features are dropped?

Only features that both fall in an excluded category and fail to contribute to a technical effect are dropped.

A feature that would be excluded as such (for example, a mathematical method) still counts if it interacts with other features to achieve a technical effect.

EPO - problem solution approach

objective assessment free from hindsight reasoning

1. Closest prior art: from the same, neighbouring or abstract technical field; must relate to the same purpose; the most promising starting point for an obvious development; most claim features disclosed; most structurally similar. There may be several; then each is analysed individually. It discloses some features of the claim but not all (otherwise the claim is not novel).

2. Difference between what the closest prior art teaches and the claim. Example: Document 1 discloses A+B; claim specifies A+B+C+D; the difference is C+D.

3. Effect: the technical effect of the difference, that is the technical consequence of applying C+D in the context of A+B.

4. Objective problem: the problem with the closest prior art; the goal for the skilled person, to improve the state of the art. Determined from the technical difference (the contribution of the invention as defined by the claim). Must not be based on hindsight and must not contain pointers to the claimed solution. It need not be an improvement: it can be to find an alternative. It need not be the problem the inventor thought she was solving.

5. Combination: assess whether the skilled person, facing the closest prior art and the objective problem, would combine it with a different document to arrive at the invention.

the two skilled assholes

• The person skilled in the (technical) art: technical expert in his field; constantly occupied with improving the state of the art by finding technical solutions to technical problems; does not understand business or other non-technical aspects.

• The skilled business person: understands non-technical aspects; can say "Let's move the money from the payer's account to the payee's account!"; is completely illiterate regarding technical aspects.

• The business person cannot take business prejudice into consideration, because business prejudice is non-technical and would then influence the inventive step analysis.

• Cannot say "Let's do this on the Internet!" "Let's make this wireless!" or "We have a lot of processor units in stock, let's use them to build this!"

• Neither is very similar to a real-life person. The business person puts together a list of non-technical requirements and conditions; the technically skilled person implements the idea by technical means, taking that list into account.

comviq approach

At least one technical feature makes the claim technical. Only technical features count for inventive step.

Common, general knowledge.

What a skilled person knows without looking it up:

• standard textbooks

• in new fields landmark articles

• sometimes individual patent applications

Skilled business person

The notion of a person who states the non-technical requirements for the engineer

excluded categories - as such

DSM A MGB PP

(a) D S M: discoveries, scientific theories, mathematical methods.

(b) A: aesthetic creations.

(c) M G B P: schemes, rules and methods for performing mental acts, playing games or doing business; programs for computers.

(d) P: presentations of information.

As such

The category, not an application of it

only that is excluded.