PATENTS IN THE 21ST CENTURY: CONVERGENCE AT LAST?

A patent gives you the right to stop others using your invention, usually for a period of 20 years, in return for publishing details of your invention.  The term “patent” originates from the Latin word patere which means to lay open, and the term “letters patent” originally denoted royal decrees granting exclusive rights to certain individuals or businesses.  Historically, each country established its own patent laws.  Convergence began with the Paris Convention of 1883, and continues today.

The Patent Cooperation Treaty (PCT) allows applicants to file a single application which will later be recognised by most countries.  This delays the costs of filing in multiple countries.  A typical timeline for filing under the PCT is shown in Figure 1.  Regional patent offices, such as the European Patent Organization and the African Intellectual Property Organization, serve as gatekeepers for patenting in their constituent countries, thereby also (in principle) reducing costs.

Although there are many differences in patent practice on either side of the Atlantic, the globalization of trade and law are driving legislators to harmonise national patent laws.  This article looks at some current issues in the US, and lists some of the differences between the US and Europe.

US Prosecution (1): Filing strategy

In the US, a provisional patent application may be filed, followed up to one year later by a non-provisional application.  Examination usually begins a year or so after the non-provisional is filed (see figure 2).  Alternatively, a PCT application can be filed, delaying examination by eighteen months.  This has strategic benefit by allowing more time for performing experiments and providing proof of concept.

US applications comprising new embodiments of the invention may be filed as Continuation-In-Part (CIP) applications and still claim priority from the earlier filing date of the original invention, but only for information disclosed in the original application.  The new embodiments get a second, later priority date.  There is no equivalent to the CIP in Europe.

US Prosecution (2): Filing strategy

US biotech patents are becoming rather harder to obtain due to US examiners treating biology and medicine as “unpredictable arts”.  This has resulted in many broad claims being unnecessarily limited, the examiner often relying on out-of-date or sloppy publications, or cases where the examiner has misunderstood published information.  Much of such examiner’s reliance has been upon older, unrelated, case law.  Therefore, one task that the applicant should focus on is to show that the field is actually predictable and therefore enable broader claims to be allowed.

Post-Issue

In the US, at any time during the period of enforcement, a patent can be challenged by any person (even the owner) by simply requesting a re-examination by the USPTO of the patent in the light of submitted prior art.  A patent issued by the EPO can be challenged by a third party for up to six months following issue using the opposition process.  Opponents can argue that the EPO patent is invalid because it fails to meet the standard requirements of patentability or it does not disclose the invention with sufficient clarity or completeness.  The US may be moving towards a similar process in the future.

Infringement Issues (1): Territorialty

Patent infringement is determined by national courts.  Making, using, selling or importing a product is infringement, as is carrying out a process in the relevant country.  Although it might seem a fairly simple task to determine if something has been imported or if a process has been carried out in a particular country, a recent case in the US involving the BlackBerry® communication device showed how tricky this can be.  Part of the BlackBerry® communications operations were performed in Canada, therefore logic suggests that there could be no infringement of a US patent.  Beware logic!  A jury found infringement.  A similar case in the UK involved the bookmakers William Hill: the operation of an on-line betting system with main computers operating outside the UK, was found to infringe a UK patent.  These events should be viewed as a cautionary tale to anyone thinking of avoiding a patent by moving certain operations outside a particular country.

Infringement Issues (2): Exemptions

In the US there are exemptions to infringement.  The “Bolar Provision”, primarily pertaining to pharmaceuticals and medical devices, permits trials for obtaining FDA  approval.  A similar provision has recently been enacted in Europe.  In both the US and Europe, there is a general research exemption, but this is now so limited in the US that for practical purposes it is non-existent.

Costs

Finally, a word on costs.  Patents may be cheaper to obtain in the US - Small Entities can get 50% reduction in official fees in the US, and European Patents can be extremely expensive because of translation requirements.  However, “A man had better have anything happen to him in this world, short of losing all his family by influenza, than have a dispute about a patent” *.  Beware of becoming involved in an interference (to determine which inventors made an invention first) or litigation in the US.  You cannot afford it....

* The judge in Ungar v Sugs, UK court case, 1892