V: 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.
V: 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.
V: 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.
V: 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.
V: 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.
V: 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.
V: 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.
a) The fees for preparation
of a patent application depend on the time spent studying
the file and producing the description, claims and drawings.
The degree of complexity of the invention is extremely
important. Broadly speaking, the fees lie between 2000
and 5000 Euros. For a relatively complex invention,
the fees may be higher. The formal act of filing the
patent application also incurs fees.
b) In France, the
official fees related to filing and the grant procedure
typically represent an amount of between 500 and 650
Euros if the application does not include more than
ten claims. The lower amount applies if you benefit
from a 25 % reduction. This reduction is reserved for:
- individuals;
- SMEs with less than 250 employees and a turnover of
less than 50 M€, whose capital is not more than 25 %
owned by an entity failing to meet these conditions;
- non-profit making organisations in the education and
research sector.
c) The costs related
to the steps to be accomplished during the grant procedure
are mainly fees for writing a reply to a notification
received from the Patent Office concerned. In France,
the grant procedure is relatively simple. Typically,
the only notification on patentability is a search report.
If the search report mentions one or more relevant prior-art
documents, a reply is mandatory. The fees for writing
this type of reply are about 20-40 % of the fees for
preparing a patent application.
d) The fees for extension
abroad correspond to the costs related to the filing
and the grant procedure for each country or region where
you would like a patent for your invention. The extension
abroad generally requires one or more translations.
The budget to be planned may vary considerably depending
on the complexity of the text and drawings to be filed,
the number of countries concerned, the complexity of
the grant procedure in these countries, etc. As a general
rule, coverage in various European countries represents
a minimum budget of about 20 000 Euros.
e) In France, the
official fees to be paid every year to maintain the
patent increase with the age of the patent. During the
first few years, you pay 35 Euros per annum or 26 Euros
if you are entitled to a reduction. The price then increases
to 150, 300 and finally 600 Euros per annum for the
last years of a patent (the maximum life of a patent
is 20 years). For the United States, fees are due after
3.5 years ($930), 7.5 years ($2360) and 11.5 years ($3910).
Reduced costs (about 50 %) apply if the applicant meets
certain conditions related, in particular, to the size
of the company. Note that the amounts mentioned are
official fees, which do not include the services involved
in payment of these fees.
V: 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.
V: 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.
V: 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.
