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How to obtain a patent?
09.08.2008 ob 08:46Many people have already heard the word “patent”, but very few know what a patent actually is. Some the practical value of patent ownership, but fewer know the way to obtain one. This article is meant to present in brief what a patent is and how to obtain one for those with a wish and ambition of patenting their invention.
What is a patent?
A patent is an exclusive right of a natural person or legal entity over an invention that is new, features an inventive step and is industrially applicable. A patent is a territorially and temporally limited intellectual property right that an individual country grants to the patent applicant for an invention that meets the patenting conditions with respect to the correctly lodged patent application.
An invention meets the above conditions if it or the technical solution are new, if it does not form part of state of the art, meaning that, prior to the submission of the patent application, it was not available to the public through either an oral or written description or use, or in any other way. An invention has an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. An invention is industrially applicable if the subject of the invention can be manufactured or used in any economic activity, including agriculture.
The way to and the conditions for obtaining a patent
The conditions for granting a patent are as follows:
• On the day of the patent application, the invention must be new, meaning that no evidence may exist in the world as to the existence of the same invention;
• an invention must be inventive, meaning that it obviously does not arise from the state of the art;
• an invention must be industrially applicable.
The patent grants the patentee the exclusive right for a defined period of time to exclude others from the use of the invention without consent (licence or the acquisition of rights). Patents are granted by the government bodies so authorised by the state. In Slovenia, this is the Slovenian Intellectual Property Office, Kotnikova 6, Ljubljana.
What is the procedure for obtaining a patent?
If we wish to obtain a Slovenian patent, we must file a patent application with the Slovenian Intellectual Property Office. At the same time, we must submit a description of the invention, patent claims, an abstract and drawings if necessary. An application fee is also paid, which amounts to EUR 100 in Slovenia, and includes the maintenance of the patent for the first three years.
If we wish to obtain a patent in several countries, there are several routes we can take. We can file an application in each individual country, regional patent offices or with the World Intellectual Property Organisation. An application can be lodged outside the country of domicile only through an authorised patent representative – agent. The application must be filed in the official language of an individual country, regional patent office or the WIPO.
Who can apply for a patent?
Any natural person that has resolved a technical problem and thus became an inventor of the invention or its representative, or a legal entity in which the inventor is employed full-time or on a contractual basis or to which an inventor has assigned the rights to the invention, or a representative of such a legal entity. In all of these cases, the inventor has the moral right to be indicated as the inventor, while the material rights always belong to the applicant who – with the granting of the patent – becomes the holder of the right or its owner. The holders of inventions can then use the patents by themselves, or can assign the right entirely or in part in the form of a right assignment or licence, or can sell the right. The invention applicant or, later on, the holder of the patent must ensure the obtainment of the patent, and later – after the granting of the patent - for the maintenance of its validity, namely regularly, each year prior to the date of the application by paying the patent maintenance fee.
Where and for how long is the patent valid?
A patent is valid only in the country for which it was granted. In the majority of countries, patent validity is limited to 20 years of the day of the application being lodged. This is also true of Slovenia; however, a patent’s lifetime is divided into two 10-year periods. In the first period when the patent is not yet substantively verified with respect to novelty and inventiveness, it can be valid for a maximum of 10 years. Because during this period – between the 5th and 7th year, when the »mortality« of patents is the greatest, the Slovenian legislation has enabled applicants, by not prescribing the substantive test of the application, to save on costs associated with such a test. Anyone wishing his/her patent to step into the second (mature) period, must, prior to the expiration of the 9th year of validity, submit a request to the patent office for the issue of a declaratory decision, pay the relevant fee and submit evidence that the invention that is the subject of the patent is new, inventive and industrially applicable on the day of submission of the application. Such evidence can be a patent granted for the invention by the European Patent Office. If such a patent does not exist, the mentioned evidence can be in the form of a patent granted by one of the offices with the status of an international institution for the preliminary test in line with the Patent Cooperation Treaty or by a patent office with which the Slovenian patent office has signed a special agreement for this purpose. If the test procedure has not yet been completed, the patent holder must notify the Slovenian patent office thereof in a timely fashion and request the termination of the procedure for issuing a declaratory decision. If the applicant does not have any of the mentioned evidence, they can pay a special fee and request from the Slovenian patent office to obtain such information from a relevant body. If it is evident from the evidence that the invention has met all the conditions for patenting upon the application being lodged, the office issues a declaratory decision enabling the patent to enter its second period of life. It can happen that patent protection needs to be narrowed if so determined from the evidence, or a patent can be pronounced void if it does not meet the conditions for patenting upon the application being lodged.
What does a patent actually protect?
A patent protects new technical solutions of technical problems that have not been resolved previously. This means that an inventor can protect his/her solution to the problem he/she encountered while using a known device or procedure or when testing the execution according to a new idea or discovery using the patent, provided that the solution is new on the global scale and is at the same time sufficiently inventive that it is not self-evident to an expert in the relevant field.
What cannot be protected with a patent?
Some inventions cannot be protected with a patent. These are primarily inventions from »non-technical« fields such as artistic creations, rules for spiritual activities, business or mathematical methods, algorithms and the like. A patent can also not be granted for ideas or discoveries, even though they are in a technical field, except for their technical realisation in the form of devices or procedures. Even inventions in surgical and diagnostic procedures or medical treatment procedures that are performed on a live human or animal body cannot be protected with a patent, while devices or substances used for this purpose can be protected. Inventions whose use would contravene law and order and morals can also not be patented, even if they are of a technical nature.
In the next article, we will see how to write a patent application and what the most frequent mistakes in patenting inventions are.
