V 01.00 2003-06-19
00 Table of Contents
Q 01.01: What is "Intellectual Property" / "Industrial Property"?
A 01.01: The term "Intellectual Property" is used to designate copyrights and neighboured rights like the rights of performing actors, as well as rights emerging from database protection laws.
The term "Industrial Property" is used to designate patents rights, utility models rights, and design patents rights as well as trade marks rights.
However, caution should be exercised. The above-mentioned distinction between "Intellectual Property" on one hand and "Industrial Property" on the other hand is not generally used throughout all of the literature. In particular, it is the language preferred by the Commission of the European Union.
Q 01.02: How important are patents in the economy today?
A 01.02: The demand for patents has dramatically increased during the 90es if the past century. The
Trilateral Website maintained by the
U.S. Patent and Trade Mark Office, the
European Patent Office and the
Japanese Patent Office has published a statistics which is shown below:
02 Patent Law
Q 02.01: What is a patent?
A 02.01: A patent is an exclusive right granted for a technical invention which, as required in most countries, offers a novel and non-obvious technical solution to a problem. The solution also must be industrially applicable. The US perspective is slightly different; US patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or compositions of matters, or any new useful improvement thereof. In many countries, scientific theories, mathematical methods, plant or animal varieties, discoveries of natural substances, commercial methods, or methods for medical treatment (as opposed to medical products) taken as such are generally not patentable. Moreover, also computer software as such is not patentable in Europe and many other countries. Nevertheless, a technical solution utilising e.g. mathematical methods or computer software may well be patentable.
Q 02.02: What effect does a patent offer?
A 02.02: Patent protection in general means that the patented invention cannot be commercially made, used, offered, distributed or sold without the patent owner's consent as long as the patent is in force. Patent rights can be enforced in a court.
Q 02.03: When does a patent expire?
A 02.03: A patent is granted for a limited period, generally for 20 years. There are few exceptions e.g. for certain pharmaceutical inventions for which patents can under certain circumstances be in force for longer terms. However, a patent lapses before its maximum term if periodical maintenance fees as prescribed by applicable law are not paid in due time by the owner. Many patents do not reach their maximum lifespan of 20 years because of the owner has lost economic interest in further maintaining. Once a patent expires, its effect ends, and the invention enters the public domain,i.e. the owner no longer holds exclusive rights to the invention, which becomes available to commercial exploitation by anybody else.
Q 02.04: How can a patent owner benefit from the patent?
A 02.04: A patent owner has the right to decide who may - or may not - use the patented invention for the period in which the patent is in force. The patent owner may give permission to, or license, other parties to use the patented invention on mutually agreed terms. The owner may also sell the patent to someone else who will then become the new owner of the patent.
Q 02.05: How can an applicant obtain a patent?
A 02.05: The first step in securing a patent is the filing of a patent application with the competent authority. The patent application generally contains the title of the invention, as well as an indication of its technical field; it must include the background and a description of the invention, in clear language and enough detail that an individual with an average understanding of the field could use or reproduce the invention. Such descriptions are usually accompanied by visual materials such as drawings, plans, or diagrams to better describe the invention. The application also contains various "claims", that is, information which determines the extent of protection granted by the patent.
Q 02.06: What happens after a patent application is filed with the competent authority?
A 02.06: Provided that all formalities prescribed by the applicable regulations have been observed and all necessary Official fees have been paid, the patent examination is made in three steps:
- A search for prior art is made;
- A substantial evaluation is conducted by the patent examiner in order to find out whether or not the invention as claimed by the applicant is patentable in view of statutory character, novelty, non-obviousness, and industrial applicability (usually this step involves some communication of the patent examiner with the applicant so that the applicant can respond to objections raised by the examiner);
- A decision is made to grant a patent or to reject the patent application.
If the applicant is not satisfied with the decision taken by the competent authority, an appeal might be lodged to a competent court or chamber of appeal.
Q 02.07: When will a patent application be published?
A 02.07: Competent authorities in most countries publish patent applications 18 months after the first patent application for the invention in question was filed. Usually another publication happens upon grant of the patent. The patent application and the patent as granted by the competent authority normally differ because of the patent examiner may have objected to deficiencies of the original application which have then been removed by means of amendments presented by the applicant.
Q 02.08: How long does it take until decision to grant a patent is taken?
A 02.08: The answer to this question depends on the workload and backlog situation of the respective competent authority. As a rule of thumb, today the time delay from the filing of an application to the decision to grant is several years, not just months.
Q 02.09: Is a patent safe for the owner after the decision to grant?
A 02.09: No. In many countries, anybody may challenge a granted patent by filing a Notice of Opposition within a certain term depending on the applicable law, e.g. three or nine months starting with the publication of the decision to grant, arguing that the patent should not have been granted because of the claimed invention is e.g. not novel or is obvious. Moreover, even after the opposition period has lapsed, the validity of a patent can be challenged in court.
Q 02.10: Is there something like a "World Patent"?
A 02.10: No. Patents are granted by competent authorities for their respective territories. For example, a patent granted by the German Patent and Trade Mark Office has effects only with respect to the territory of the Federal Republic of Germany. However, certain authorities have the power to grant patents for more than one state, namely the
European Patent Office (EPO) and the
Eurasian Patent Office.
Q 02.11: How can the applicant get patents abroad?
A 02.11:There are in general three ways to obtain a patent in a foreign country:
- Directly filing a patent application with the competent authority in a foreign country;
- Filing a patent application with a competent authority having power to grant a patent for a group of countries, e.g. the
European Patent Office (EPO) and the
Eurasian Patent Office; or
- Filing a patent application under the "Patent co-operation Treaty" ("PCT"). The
Patent Cooperation Treaty (PCT) provides for the filing of a single international patent application which has the same effect as national applications filed in a number of designated countries. An applicant seeking protection may file one application and request protection in as many signatory states as needed.
Q 02.12: Until when can foreign applications be made?
A 02.12: In most countries, an applicant who has duly filed an application for a patent (or for the registration of a utility model) enjoys, for the purpose of filing in the other countries, a right of priority. This priority period is 12 months for patents and utility models.
Any subsequent filing in any other countries before the expiration of the priority period is not invalidated by reason of any acts accomplished in the interval, in particular, another filing, the publication or exploitation of the invention.
If the applicant makes his invention available to the public just after having filed a first patent application, any further foreign application can effectively made only within the 12 months priority term because of otherwise the applicant's own publication of the invention would in most countries destroy novelty. Alternatively, if the applicant keeps the invention secret, foreign applications can be made even after the priority period has lapsed. However, in any case the applicant must be aware that 18 months after the filing date the first patent application will be laid open and, hence, destroys novelty for any subsequent applications.
Only in the US the situation is somewhat different; under US patent law, a patent will not be granted to an applicant unless the application is filed less than one year from the date that the invention was sold or offered for sale within the United States. Another condition imposed under US patent law is that the patent will be denied unless the application is filed within one year of the date the invention was described in a printed publication anywhere in the world.
Q 02.13: How is the scope of protection of a patent determined?
A 02.13: In the very details, it is often not an easy task to determine whether or not a patent is infringed. However, as a general rule of thumb, the scope of protection is determined by the claims of a patent. The provisions of applicable law may differ from country to country. For example, with regard to European Patents granted by the European Patent Office, the extent of the protection conferred by a European patent has to be determined by the terms of the claims. Nevertheless, the description and drawings shall be used to interpret the claims. However, this rule should not be interpreted in the sense that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Neither should it be interpreted in the sense that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patentee has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patentee with a reasonable degree of certainty for third parties. [Article 69 EPC and Protocol on the Interpretation of Article 69 of the Convention, adopted at the Munich Diplomatic Conference for the setting up of a European System for the Grant of Patents on 5 October 1973].
A patent comprises at least one "independent" claim, i.e. a claim which in its wording makes no reference to another claim. Patents may, depending on applicable law, comprise multiple independent claims. Usually patents also have "dependent claims", i.e. claims which include a reference to at least one other claim (e.g. "Method according to claim 23 or 25, further characterised by ..."). All independent claims are to be taken as starting points for the evaluation of possible patent infringements. With a grain of salt, the dependent claims are merely fallback positions in case of any independent claim should fall due to lack of novelty, to obviousness or the like.
A claim generally consists of a generic clause (e.g. "Method of making acetic acid", "Drilling tool" etc.), and a list of features further characterising the subject of the generic clause. If there is at least one independent claim in a granted patent which matches a method worked in real life by a third party or any item commercially exploited on the market by said third party in view of the generic clause as well as in view of all of its features, a real case of a patent infringement may be given. Hence, the generic clause and the feature are all to be connected by a logical ".AND." operator, whereas the (independent) claims are all to be connected by a logical ".OR." operator when patent infringement is to be determined. However, under certain circumstances a claim might be infringed even if one or more features are not matched literally but in a technically equivalent sense; the doctrine of equivalence may say (depending on applicable law) that the scope of protection provided by a claim is effectively broader than its pure wording. Moreover, a case of "contributory infringement" may be given even if only a part of the features of an independent claim is matched. Therefore, proper determination of the scope of protection of a patent claim always needs expertise.
03 Economic and political aspects
Q 03.01: Why are patents necessary?
Patents are instruments to secure fair market values for novel and non-obvious technical problem solutions (»inventions«). In general, huge investments are necessary for creating novel and innovative products but imitation is extremely cheap. This effect clearly discourages R&D investments. Sometimes players simply attempt to keep knowledge secret and avoid leakage of knowledge to the intellectual commons as well as avoid paying costs for patent protection. However, in real life this works only in a relatively small fraction of cases, e.g. when a production process can be shielded from prying eyes in a "closed shop" factory building. The instrument of patent law provides means for encouraging the originator to publish the novel and innovative knowledge e.g. by means of the official patent publication in return for an "artificial lead" enforceable on the basis of granted patents.
Q 03.02: Why is it justified to use the language of "property"?
A 03.02: The creation of some technical invention by an inventor, this act taken as such, does not create any kind of property which the inventor could enjoy. If and only if the applicable law provides particular regulations giving the author or the inventor a monopoly on the economical exploitation of the creative work or the invention, respectively, some new kind of property emerges.
Some countries like the U.S. mention the power or even obligation of the state to provide for intellectual property legislation in their respective constitution whilst others do not. However, all
Member States of the World Trade Organisation (WTO) are bound by the
Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) demanding a certain level of protection of Industrial and Intellectual Property throughout all WTO States.
Therefore, patents form assets in the shape of monopoly rights. In many countries, the meaning of the legal term "property" does not only cover right in rem over movables and immovables but it covers also many other kinds of legal claims. In Germany, for example, the constitutional protection of property covers all assets of rights in rem, of obligations, as well as legal positions granted by public law if these are comparable with assets and obligations. Hence, the term "Intellectual and Industrial Property" means a certain kind of assets provided by legal rights granted due to certain provisions of public law and protected by the constitution under the concept of "property" in its broadest sense.
Applicable law (copyright law, patent law etc.) may or may not require a certain administrative act of some competent authority. For example, in general there is no need for such administrative action in the field of copyright law but certainly it is when applying for grant of a patent.
If the substantive or procedural prerequisites prescribed by applicable law are not met, no "Intellectual Property" or "Industrial Property" is created out of knowledge. Industrial and Intellectual Property is a matter of positive law only. In particular, there seems to be no real justification of Industrial and Intellectual Property in terms of "natural law" as defined as something like the "emanation of the Divine Providence, rooted in the nature and reason of man". Hence, the conditions under which a transformation of knowledge into Industrial and Intellectual Property is deemed possible is a matter of policymaking.
Q 03.03: What is the macro-economic benefit of patents?
A 03.03: In a knowledge-based or knowledge driven globalised economy, knowledge is, of course, an important factor of productivity. However, it is a very volatile one. In the first place knowledge is sealed in the brains of human experts creating said knowledge. If this knowledge is expressed outside the brains e.g. in the form of text documents or of computer databases, it would have no quantifiable economical value in terms of money unless a patent scheme exists.
In a knowledge driven economy it is generally vital to be able to trade on knowledge independent of its creators by transforming knowledge into an asset. And, in all modern societies trade is closely interlinked with the assignment of monetary values to assets.
Patents are an efficient way of delimitation and fixing of knowledge. After the creator of knowledge has provided some external representation thereof, the now externally available knowledge can been delimited and fixed by means of patents resulting in property assets, the monetary value of which can be specified as a representation of some kind of consensus of economical qualities thereof, thereby forming the basis for selling, buying and licensing of knowledge.
If a patent proprietor does not intend to sell or license knowledge, the monopoly characteristics of patents allow full disposition of said knowledge in a safe and enforceable manner without relying on keeping it in secrecy.
In particular those kinds of Industrial Proprty cause substantive costs which come into existence only by means of an administrative act (e.g. grant of a patent) after a certain formal procedure has been invoked and followed (e.g. filing and prosecuting of a patent application). Hence, every player in the field of the knowledge-driven economy will have to balance the costs of Industrial and Intellectual Property against its benefits. If the benefits do not outweigh the costs, the reasonable player will refrain from obtaining Industrial Proprty and allow the related knowledge to become part of the intellectual commons (see below).
There are important areas of industrial activity where huge investments are necessary for creating novel and innovative products but imitation is extremely cheap as it is true e.g. with regard to the pharmaceutical industry. Sometimes players simply attempt to keep knowledge secret and avoid leakage of knowledge to the intellectual commons as well as avoid paying Industrial and Intellectual Property costs. However, in real life this works only in a relatively small fraction of cases, e.g. when a production process can be shielded from prying eyes in a "closed shop" factory building. The instrument of Industrial and Intellectual Property, say patent law, provides means for encouraging the originator to publish the novel and innovative knowledge e.g. by means of the official patent publication in return for an "artificial lead" enforceable on the basis of granted patents. Moreover, the pharmaceutical example shows that business secrets are not generally a suitable means of ensuring exclusive exploitation of knowledge because of the composition of a novel drug can be analysed by competitors at a fraction of the costs of research of the innovative originator.
Although very little research results on the overall economical effects of Industrial and Intellectual Property in modern globalised economies have come to be known up to now there might well be reasons to assume that the free trade in knowledge enabled by Industrial and Intellectual Property is not only for the benefit of the individual players in the field but also for the globalised economy in its entirety because of it fosters the general mode in which capitalistic market economies are running. However, it is a highly political issue. Industrial and Intellectual Property is closely interwoven with the process of globalisation, and nobody should be surprised seeing many globalisation critics also criticising the system of Industrial and Intellectual Property and vice versa. But this surely does not mean that the present system of Industrial and Intellectual Property would not deserve permanent review in view of its gory details.
Q 03.04: What about the "Intellectual Commons"?
A 03.04: All subject-matters either not covered by regulations creating Industrial and Intellectual Property or having failed transformation into Industrial and Intellectual Property despite existence of applicable regulations e.g. due to non-fulfilment of procedural prerequisites fall into the category of the "intellectual commons". For example, a technical invention for which no patent application was filed and which has made known by the inventor becomes part of the "intellectual commons" and can freely be exploited by everyone (unless other laws prevent doing so). It should, however, not be overlooked that the "intellectual commons" is not merely means to catch up residual pieces of knowledge which have due to whatever regrettable circumstances failed to be transformed into Industrial and Intellectual Property. The intellectual commons provides a collection of knowledge easily accessible for all without need for lengthy commercial negotiations with any property holder in order to obtain licenses etc. In fact there is even a huge area of intellectual commons which has been deliberately created from Industrial and Intellectual Property, i.e. in this case from copyright claims, on a contractual basis. There is no doubt that computer software is protected by copyright, and, therefore, the intellectual fruits are automatically transformed into Industrial and Intellectual Property upon completion of work. Nevertheless, many tens or even hundreds of thousands of computer software authors have chosen to prefer to contribute the intellectual fruits of their programming work to such artificial intellectual commons by licensing it under some "Open Source" licence, e.g. the
GNU License. They do so because they feel that creation of computer software on an intellectual commons is more convenient and even efficient than utilising other software industry business models using copyright to deny all others in particular the right to create derivative works.
Severe controversies emerge if artificial intellectual commons interfere with the rest of the Industrial and Intellectual Property system. One prominent example is the current debate on patents on computer implementable inventions. More ...
Q 03.05: What about the attitude of the Commission of the EU towards Industrial and Intellectual Property?
Internal Market DG of the CEC on Intellectual Property: "Intellectual property rights (IPR) provide an incentive for the creation of and investment in new works (music, films, print media, software, performances, broadcasts, etc.) and their exploitation, thereby contributing to improved competitiveness, employment and innovation. In economic terms, the contribution made by copyright-based goods and services to the Community's GDP is significant and rising (around 6% of GDP). Moreover, the field of copyright is associated with important cultural, social and technological aspects, all of which have to be taken into account in formulating policy in this field. There has been significant harmonisation in the area of IPR to do away with barriers to trade and to adjust the framework to new forms of exploitation. The Internal Market DG's task is to enforce this "acquis"; to complete it (eg. artist's resale right) and to modernise and adapt it to new developments in technology or the markets concerned (e.g. directive on copyright and related rights in the Information Society). It is also involved in inter national negotiations to improve IPR internationally."
Internal Market DG of the CEC on Industrial Property: "The importance of protection of Industrial Property rights (in particular the protection of inventions, industrial design and trade marks) for innovation, employment, competition and thus economic growth, cannot be under-estimated. The Internal Market DG focuses in particular on these "knowledge-based" aspects of the Single Market. Its work is partly concerned with traditional instruments regulating the market, such as harmonising the laws of the Member States relating to industrial property rights to avoid barriers to trade. The aim is also to create unitary systems for the protection of such rights with Community-wide effect through the filing of one single application for protection (Community trade marks, designs and patents). The Internal Market DG is also increasingly concerned with ensuring that the Single Market functions properly in the Information Society and the fight against Counterfeiting. A fundamental discussion on the principle of Community exhaustion of trade mark rights and its economic effects on innovation, employment and prices are also handled by the Internal Market DG, as well as the discussions on Enlargement."