“Killing the creator was a traditional method of patent protection,” or so says Terry Pratchett. Reality isn’t quite so extreme! Creators, inventors, owners, must however negotiate many hurdles and jump through many a loop in order to achieve the patent Holy Grail.
First and foremost, patents protect inventions, whether products or processes, and improvements to established products- Jeanine Rizzo
After all, a patent, when granted, gives the holder an exclusive right to the invention for a period of 20 years. Third parties cannot make any use of the invention during that time, unless they obtain specific consent to do so from the owner, by getting a licence for example.
First and foremost, patents protect inventions, whether products or processes, and improvements to established products. There are strict criteria which must be satisfied: inventions must be new, involve inventive step and be capable of industrial application.
Not all subject-matter is patentable; works are patentable when they are embodied in technical applications. This is why aesthetic creations are excluded from patents (yet find their home in copyright). Another 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.
In this neck of the woods, that is, in Europe, computer programmes cannot be patented – for now. They are excluded only to the extent that the patent relates to the software “as such”. This is not so in the US, leading us to see a growing number of patent wars in software – king of which is the “slide to unlock” debacle.
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.
We are however on the brink of a unified patent for the European Community. The impetus to harmonise patent law throughout the EU had failed some years back, but the need for it is too great and we have progressed to being a short while away from the unitary patent system.
The EU unitary patent, however, is not as unitary as the name suggests. In 2010 some 12 EU member states decided to propose using the enhanced co-operation procedure so that these countries could move towards creating a unitary patent system. This would be the second time this procedure would be used since its introduction. Twenty five EU states have signed up to it, with Spain and Italy opting out due to language issues. Other issues exist with the proposed setting up of a Community Patent Court and the procedure for patent litigation.
Moving along, we come to the patent application itself. This is a complex piece of work, containing a thorough description of the invention, and a series of claims, which are highly technical statements of how the invention works. It is not just anybody who can compile a patent application. Only a person with the right technical and legal knowledge can formulate claims. Once the patent application is complete it is submitted for examination, which can take months if not years. 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 assessed against the body of existing knowledge. If it already exists, wherever in the world, then it cannot be patented. For inventive step, the application fails if the invention can be created by a regular person not involved in the technical field. Patents aren’t granted for obvious inventions or developments. That said, 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 after a laser beam – both seem quite obvious. This highlights how important the examiner’s task is in weeding out what cannot be protected.
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.
www.fenechlaw.com
(This article is not intended to offer professional advice and you should not act upon the matters referred to in it without seeking specific advice.)
Dr Rizzo specialises in intellectual property law at Fenech & Fenech Advocates.