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Patents - not as obvious as they may seem

According to Terry Pratchett, "killing the creator was a traditional method of patent protection". Nowadays things aren't so extreme! One applies for a patent, and when this is granted, the holder is given an exclusive right, entitling him to prevent unauthorised third parties from commercially exploiting the invention for a period of 20 years.

A patent protects inventions, whether products or processes, and improvements to established products. However, there are strict criteria which must be satisfied: inventions must be new, involve inventive steps and be capable of industrial application in order to be patentable.

Not all subject-matter is patentable. The underlying reasoning is that works are patentable when they are embodied in technical applications. This is why aesthetic creations are excluded. However there is a totally different intellectual property right (copyright) dedicated to them. Another reason is that techniques which relate to living organisms, as a matter of public interest, should remain unrestricted. Other unpatentable matter includes discoveries, scientific theories and mathematical methods, schemes, rules and methods for performing mental acts, playing games, doing business, or methods for medical treatment. And as discussed last time, computer programmes cannot be patented - for now. Such unpatentable subject matter is excluded only to the extent that the patent relates to that subject matter "as such".

Patents, just like other intellectual property rights, are territorial. So, to obtain protection for an invention in Malta an application is filed with the Maltese Intellectual Property Registration Directorate. When the patent is granted, it is only enforceable in Malta. While there is a community-wide system set up for trade marks, there is no such equivalent for patents. The impetus to harmonise patent law throughout the EU failed some years back, but the need for it is too great. The proposed Small Business Act for Europe contemplates introducing a harmonised approach to patents - but this is still in the pipeline.

A parallel system has emerged in Europe. The European Patent Organisation is an intergovernmental organisation created by the European Patent Convention of 1973. The organisation runs the European Patent Office, which provides inventors with the opportunity to obtain patent protection in 38 countries. One does, however, wonder how the office would fare once an EU-wide system is introduced.

Leaving Europe, on an international scale we find the Patent Cooperation Treaty, established in 1970 which, as its name suggests, is the inventor's shortcut to patent registration in any of the 139 member states. It eases the application process, cutting down bureaucracy, thus allowing the submission of a single application which is then forwarded to the countries selected by the inventor.

Patent applications are a complex piece of work, containing a thorough description of the invention. This is divided into a series of claims - highly technical statements of how the invention works. It is not just anybody who can fill in an application form. Only a person with the right technical knowledge can formulate the claims, therefore a person with a background in chemistry does not have the right skills to complete an application form on mechanical engineering. Once the patent application is complete it is submitted for examination. This is where the application is weighed against the unpatentable subject matter, and if successful, it must then fulfil the requirements of novelty, inventive step and industrial application.

With regard to novelty, the application is weighed against the body of existing knowledge in its technical field. If it's been done already then it cannot be patented. For inventive step, this means that the invention fails if it can be deduced by a regular person not involved in the technical field. Patents aren't granted for obvious inventions or developments. Unfortunately, some do manage to make their way onto the register.

Artfully worded patent applications have led to some eyebrow-raising patents being granted. For example, a US patent has been granted for a stick to be used as a toy for pets; and another for a method of exercising cats by having them chase a laser beam - both seem quite obvious, leading one to question the novelty and inventive step involved. The one that takes the cake, however, is a patent granted for none other than a common wheel! Granted, the application was majestically crafted. This highlights how important the examiner's task is.

Granting patents has very controversial ramifications since a patent gives a very exclusive monopoly to the owner. Keep this in mind when considering how the US has stopped classifying methods of doing business as non-patentable matter. The software dilemma is another one that is causing great debate. And a more burning issue is that of patents granted for medicinal products and the impact this has on the price and availability of pharmaceuticals worldwide. All is, therefore, not as simple as it may seem.

• Dr Rizzo specialises in intellectual property law and art law with Fenech and Fenech Advocates.
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