PATENTS – COMMON PITFALLS AND HOW TO AVOID THEM – Chapter I
A1) Underestimating your own invention
Technicians, researchers, entrepreneurs in technological sectors are often so expert in their technology that potentially patentable innovations appear to them as mere banality.
Many people do not know that the majority of patents do not concern revolutionary or shocking inventions, but rather small improvements of already known solutions which allow, for example, to improve performance and/or reduce production costs and/or facilitate the use of a certain device or method.
According to most states, in order to be patentable, a technical solution must be new and must possess an inventive step.
We will come back to the topic of the novelty later.
With regards to the inventive step, the first question to be asked for its evaluation is whether the technical solution we developed, assuming that it is new, solves a previously unsolved or solved technical problem, but in a different way; in the affirmative case, the solution could be patentable, even if the solved technical problem may apparently seem small.
The next step for the evaluation of the inventive step generally involves evaluating whether the “person skilled in the art “, on the basis of his common knowledge / or of any known documents available to him/her, would have solved the technical problem as in the new technical solution which has been developed.
It is important to point out that each state uses its own criteria for evaluating the inventive step; for example, the European Patent Office uses the so-called Problem-Solution-Approach (which is used more and more also in Italy), while other patent offices (for example the US, Chinese, etc. patent offices) use different ones.
In this context, it is not possible to explain in detail all the different criteria used for the evaluation of the inventive step in the different states, which would indeed require much more than an article of a few pages; However, the message we would like to transmit is that if the technical solution that has been developed is new and solves a technical problem, even if it might seem trivial at first glance, it is always worth reflecting more deeply on its potential patentability, possibly involving a patent consultant who can evaluate the presence of the inventive step in respect to the conditions required by the law of the state where you want to file the patent.
By way of example only, we mention the case of a granted European patent (and we underline in this regard that the European Patent Office submits patents to a thorough examination of patentability, evaluating their novelty and inventive step) which essentially protects a refrigerator whose internal space includes at least one OLED that illuminates it; even if it might seem strange at first glance, inventions of this kind are often patentable.
A2) Disclosing the invention before filing the patent
As already explained in respect to the first pitfall, the main requirements for a technical solution to be patentable are novelty and inventive step.
We have already gone through the topic of the inventive step.
With regards to novelty instead, in the patent field we speak of absolute novelty and relative novelty.
Some jurisdictions, for example the Italian and the European Patent Office ones, require absolute novelty, i.e. that before filing the patent the invention must be new, i.e. never before disclosed to the public (except under confidentiality agreements), where disclosure means the communication in any form of the technical solution to third parties not bound by secrecy; for example, the sale of a product, even in single copy only, compromises its absolute novelty.
Instead, other jurisdictions (for example Germany in relation to the utility model, which is essentially a sort of patent that requires a “less inventive activity” and which lasts a maximum of 10 years instead of the 20 years of a patent) require the relative novelty, or local novelty, i.e. they do not consider as novelty destroying prior uses that took place outside their own national territory (for example the sale, or the exposure at a fair or congress, etc.).
Some jurisdictions (for example the U.S.A, Germany for the utility model, but not Italy nor the European Patent Office) also provide for the so-called “grace period” (generally equal to 6 or 12 months, depending on the jurisdiction), during which the inventor can disclose the invention, while keeping the right to patent it.
Therefore, before filing a patent in a state that requires absolute novelty, it is important not to disclose the invention and, if this is not possible (for example because there is the need to discuss the invention with a supplier or a customer), you should disclose it only in secrecy, for example by preliminarily signing a Non-Disclosure Agreement (NDA) with the third parties to whom the invention must be shown.
If the invention has already been disclosed, and therefore the right to patent it in a state that requires absolute novelty has been lost, you must still ask yourself whether it might make sense to try to protect the invention at least in one or more states that provide for relative novelty and/or grace period.
A3) Not verifying/regulating relationships with third parties
A brief explanation about the need to sign Non-Disclosure Agreements (NDA) before disclosing an invention has already been made.
What must be emphasized now is that inventions can come from either one or more natural persons, and the property rights (including the right to patent) on these inventions (but not the moral right to be recognized as inventor, which is instead inalienable) can be transferred by these natural persons to other parties (either natural persons and/or legal persons) as a result of particular agreements between the inventors and these parties.
For example, in some cases (which will not be further explained here) the employment contract between the employer and an employee provides for the transfer to the employer of the property rights on the employee’s invention (and therefore the right to patent, too).
In the case of an invention made by several inventors, except for specific agreements that provide otherwise, the right to patent belongs in equal parts to the different inventors, in community of property.
In the event that several parties (for example a company and a supplier, or a customer of the company, or a consultant, etc.) collaborate in the development of a technical solution, it is important to establish from the beginning of the collaboration (for example through specific development or co-development agreements) whom the ownership of any inventions developed during the collaboration belongs to, possibly also specifying how the intellectual property of the previous technical solutions of the various collaborating parties, and that of any solutions independently developed during the collaboration, must be treated.
Not regulating these issues before starting the actual collaboration often leads to conflicts between the parties, which are then almost always quite difficult to solve.
A4) Not considering the different legislations
As already anticipated, different states generally provide for different rules regarding the assessment of novelty and inventive step.
Furthermore, some legislations (for example the Italian and the European Patent Office ones) establish that some technical solutions are excluded a priori from patentability (for example the methods for doing business and computer programs as such), while other legislations (for example the U.S.A one) allow the patenting also of these technical solutions.
Moreover, the form of claims of a patent differs from state to state; for example, in the US patents the expression “means for” in a claim has an interpretation necessarily limited to the examples of those means described in the description, while, for example, in Italy and in the European Patent it has a broader interpretation.
In addition, some legislations allow the use of several independent claims within the same patent, while others allow, regardless of exceptions that it is not possible to explain now, at most one claim for a product, one for a production method of the product and one for a use of the product.
Finally, in some legislations, what the owner says during the examination of the patent can have a limiting effect on the interpretation of the claims (the so-called “estoppel” doctrine adopted in the U.S.A).
These and other differences between the various national rules mean that the same invention can be protected in very different ways state by state; this must be taken into consideration both with reference to one’s own patents (which may or may not cover the solution of a potential infringer depending on the state in which the patent is filed), and when one wants to evaluate the Freedom To Operate (FTO) of one’s own solution with respect to patents of others. In fact, if the patent of others has been extended to different states (for example as a European patent, in the U.S.A, in China), it is necessary to evaluate any interference with one’s own solution with respect to the various patents in all the states of interest, and not limiting itself to verifying the possible interference with respect to the patent in a single state, assuming that the protection is the same in all the states.
A5) Getting scared about a negative Search Report
Often, especially in the case where the initially requested protection in a patent for a certain invention is deliberately broad (taking into account that it is generally possible to narrow down the scope of the requested protection during the patent examination, but not to broaden it), the Search Report can be negative (i.e. it can contain one or more documents, the so-called “X” or “Y”, which in the opinion of the examiner compromise the novelty or inventive step of the invention).
Further to this point, it is important to underline that, very often, in the face of negative Search Reports, it is still possible to obtain the granting of the patent, in some cases by modifying the claims in order to reduce the scope of protection of the same (i.e. by adding to the independent claim one or more characteristics, present both in the dependent claims and/or in the description, which limit the protection but are not shown in the previous documents mentioned by the examiner) and in other cases simply explaining to the examiner the real differences between the solution object of the patent application and the already mentioned prior art, which the examiner may not have grasped.
In any case, it makes no sense to be frightened a priori by a negative Search Report, but it is always worth analysing in detail the examiner’s objections and the mentioned documents related to the prior art to evaluate independently, preferably with the help of a patent attorney, the validity of the objections, and whether it is possible to overcome them.
A6) Mentioning the prior art in one’s own patent in an unreasoned way
Typically, when you write a patent, you start from the description of the prior art, trying to show some of its problems in order to highlight how the solution object of the current patent solves them.
If the prior art mentioned in the patent is a product or a method of the patent owner himself/herself, describing in the patent the defects of this product or the method (for example that the well-known product tends to catch fire) could be dangerous, since, in some legislations, this could be considered like an admission that either the product or the method has some problems, and it can lead to legal issues not really related to the patent, but to the production or marketing of the product or to the use of the method.
It is therefore advisable to mention the prior art in a patent only after having carefully evaluated the possible effects of what is being mentioned.
That is all for now, in the hope of having clarified some often little-known or completely ignored aspects of the patent world, or at least of having provided some ideas to reflect on in order to avoid running into some slip-up with unpleasant consequences.
We await you soon for the second chapter.