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Q&A


Q: What can be protected by a patent?
A: According to the European conception, all technical inventions can be protected by patent. Despite what many people think, inventions in the field of information technology and biotechnology can be protected by patent. A European patent can protect a product, a process, a chemical or biological compound or even a computer program, a signal and a new application of a known substance.

Q: What are the main patentability criteria?
A: In European law, an invention must be novel and involve an inventive step to be patentable. These criteria are assessed with respect to the prior art. Prior art includes all information disclosed before the filing date of a first patent application (i.e. date of first filing). However, any information which can be proven to have been communicated confidentially is not taken into account. In other words, information communicated non-confidentially represents a prior art, irrespective of how it was communicated. It can be communicated in writing, verbally, electronically (Internet) or even by providing a sample to a prospect.
Two important points should be borne in mind. Firstly, the filing date of a first patent application for your invention is critical, since it determines the scope of the prior art. Secondly, you should be vigilant regarding the communication of information about your invention before this date. Any disclosure to a third party not bound by an obligation of confidentiality destroys the novelty and therefore the patentability of your invention in Europe. The European Patent Convention does not include a "period of grace" allowing the inventor to freely disclose its invention before the filing date without any impact on the patentability.

Q: How can I find out whether an invention meets the main patentability criteria?
A: Your invention is not novel if an earlier non-confidential document, or any other form of non-confidential communication, already discloses all the characteristics of your invention. The same applies if someone has filed a patent application before you for the same invention. Hence the importance of the date of first filing.
Assessment of the inventive step is more complex and suffers from being slightly subjective. Formally, the invention must not be obvious having regard to the state of the art for those skilled in the art. However, the invention does not have to be a potential NOBEL Prize winner to be considered as patentable.
An approach frequently used in Europe is based on the concept that an invention is a solution to a problem, an answer to a question. In other words, an invention is characterised by two main features: a problem and a solution (a question and an answer). At least one of these two features should not be obvious; there should be an element of surprise in at least one of the two. If the problem is known, the solution should not be obvious. In other words, if those skilled in the art are asked the question, they should not be able to immediately give an answer that corresponds to that of the invention. The inventive step may also concern the problem posed: asking the question characterising the invention was not obvious.
It should be pointed out that in Europe, only the technical aspects of the problem and the solution are taken into consideration when assessing the inventive step. A conventional computer programmed to apply smart management of monetary funds is not patentable under European law. There may be an inventive step, but it lies in the field of monetary funds management, which is not a technical field and, consequently, cannot be taken into account when assessing the inventive step.

Q: Do I have to keep my invention confidential?
A: Yes, it is in your own best interest to keep your invention confidential until the date when your patent application is published. This date is generally 18 months from the date of first filing, which is a relatively long period of time. A confidentiality agreement is required if you are likely to communicate information concerning your invention to third parties (see "Services - acquisition of patent rights").
What are the consequences if the confidentiality of your invention is not preserved until the date your patent application is published? Three periods should be distinguished.
The first period extends up to the filing date of a first patent application: the first filing. It is the most critical. Disclosing your invention destroys its novelty: your invention is no longer patentable. Disclosure may take several forms. For example, giving a sample to a prospect, even if the invention is not "visible" from the outside, may constitute disclosure.
The second period concerns the 12 months following the date of first filing, referred to as the "priority year". You are entitled to file other patent application, for a territorial extension, claiming the date of first filing. A confidentiality issue arises if one or more of these extension applications include information that was not included in the text of the first filing. Typically, you have conceived an improvement that you want to protect by including it in the extension applications. This improvement does not benefit from the date of first filing. If the improvement was disclosed before the filing date of an extension application, then disclosure of the improvement represents prior art opposable to this extension application.
The third period lies between the end of the priority year and publication of your patent application. This is the least critical phase. Disclosure has industrial and commercial consequences: your competitors may find out about your invention prematurely.

Q: Can an invention be protected by keeping it secret?
A: According to European policy, as soon as an invention that had been kept secret is disclosed, whether abusively or inadvertently, it becomes an irrevocable part of the public domain. A patent is the only way of temporarily (maximum 20 years if the patent is maintained) keeping a monopoly over the invention. In some countries, however, (for example in the US) a patent application can still be filed despite accidental disclosure.

Q: What can an inventor do if the invention is stolen?
A: The French Industrial Property Code provides for an "action for recovery of property" in case of abusive filing of a patent application by a third party who deliberately "stole" the invention from the legitimate inventor. This type of action must be taken out before the competent courts within three years following the publication of the application filed abusively.

Q: How much does a patent cost?
A: To evaluate the costs of a patent, various aspects should be considered:
a) costs related to preparation of a patent application; (+)
b) official fees related to filing and the grant procedure; (+)
c) costs related to the steps to be accomplished during the grant procedure; (+)
d) costs of extension abroad; (+)
e) costs related to payment of maintenance fees applicable in various countries. (+)
Note: The amounts indicated below, valid for 2007, merely give an indication of the amounts involved.

Q: How much is a patent or a patent application worth?
A: The question is difficult but the answer is easy: something is worth what a purchaser is ready to pay. Some people will claim that they can calculate the amount by applying sophisticated, or at least highly complex or even vague formulae. We are sceptical about this quantitative accuracy. Estimating the "true" value of a patent or patent application starts by a serious assessment of the patent scope: what products or services can reasonably be considered as infringing? This question also extends to the future products and services, the answer is rather speculative. The situation is even more complex for a patent application: the scope of the future patent should be estimated, without even knowing whether it will be granted. Then, the following question arises: what is the market value of the products and services concerned? How will this market develop in the future? There is another critical question that determines the value of your patent: what are the alternatives to the patented solution? If a patent can be easily bypassed, it will have very little value. One simple criterion to be taken into consideration: the remaining lifetime of a patent. A patent that has nearly reached the end of its lifetime is worth less than a patent that still has many years to go. Finally, we repeat the simple answer: something is worth what a purchaser is ready to pay. Patent assignments for a specific technological field may provide an indication of the value of a patent in this field.

Q: How do I exploit a patent?
A: There are several ways of exploiting a patent, or even a patent application. Firstly, you can exploit a patent by retaining the exclusive right to exploitation of the invention it protects. A patent constitutes an exclusive right allowing you to prohibit a third party from exploiting your invention. The patent therefore confers a temporary monopoly, providing good profit margins. Caution: a patent application does not give you the right to prohibit third parties from exploiting your invention; you must wait until the patent is granted. However, you can intimidate your competitors by showing them your patent application, preferably after it has been published (see "Do I have to keep my invention confidential?").
Another way of exploiting a patent consists in granting licences. You allow a third party to exploit your invention against compensation. This compensation may be financial, for example, or in the form of a cross licence, or a combination of both. A licence may be exclusive or non-exclusive. For an exclusive licence, the question of whether the patent can be exploited by both you and the licensee, or whether it is reserved for the licensee alone, should be defined. In the latter case, you undertake not to exploit your own invention.
There is no need to wait until the patent has been granted before signing a licence. There is no reason why a licence should not be signed from the time the patent application is made. There is even a commercial aspect. You imply to your potential licensee that, by signing now, the licence will be less expensive than after the patent has been granted. Once the patent has been granted, there is no doubt as to its patentability and an uncertainty bonus is therefore no longer necessary.
Finally, you can assign your patent or your patent application. A patent is an intangible asset with a certain value, even if only from the accounting point of view. The same applies for a patent application.

Q: What is the marking of a product protected by a patent?
A: Marking a product consists in indicating to third parties the existence of protection by a patent for the product concerned.
When the dimensions and type of the product permit, it is recommended to apply the marking directly on the product. For a complex product, only the component protected by a patent should be marked. In other cases, it is recommended to apply the marking on the packaging, on brochures, advertising leaflets or catalogues.
It is strongly recommended to mark the products protected by a patent or a patent application when the products are commercialised in at least one of the following countries in which a patent is in force, i.e.: United States, United Kingdom, Ireland, Denmark, Sweden, Taiwan, Australia. In these countries, the amount of the damages awarded in the event of an infringement lawsuit may be higher if the products commercialised and considered as infringed have been marked. In the other countries, marking has no particular benefit except for an advertising effect with purchasers and probably a dissuasive effect with respect to potential infringers.
The marking must distinguish between a patent application (e.g. EP No. xyz Patent Pending) and a patent granted (e.g. US No. xyz) and must clearly indicate the countries for which there is protection by patent. For example, in the United States, the marking "pat." or "patented" must be followed by the number of the patent granted in the United States. The marking "patent pending" or "patent applied for" must be followed by the patent application number. Obviously, the marking must be removed from a product whose patent has expired. Any incorrect marking will be considered as abusive and is liable to prosecution. Consequently, the marking should be used very cautiously to avoid pitfalls for the patent owner.


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