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Legal definition of a patent can be summarized as follows:
“Invention is a technical solution, that is new, has an inventive step and industrial applicability.”
There are four categories of inventions: products, equipment, ways and applications.
Only an invention that complies with the above mentioned requirement can be patented.
What does it practically mean? Can a basic scientific research be patented?
In contrast to what might have been thought, yes, very often. It is not accidental, that the world’s best universities, such us
Criterion of novelty states that at the time of filling in the patent application, the invention must be new to the world. It is being checked through checking the so called state of the art (that is all previous scientific publications, conference announcements, patents and patent applications). It does not matter who was the author of those publications. Sometimes it means that the inventor himself destroys the patentability of an invention through its unreasonable public disclosure (eg. in a scientific paper or open lecture) prior to filling a patent application. From the other hand the invention is not disclosed until it is physically publicized. That means that only eg. submitting a publication to the scientific journal or to reviewers does not destroy the novelty of an invention. Only when the article is published in the internet or printed it is considered as its public disclosure. It is a very important information, because in extreme cases, when a publication with accidentally disclosed invention is to be published within a couple of days, it is possible (at least theoretically) to prepare a patent application individually and submit it to the Patent Office (at least 1 day prior to publication). Cost of filling in a patent application individually is about 600 zł.
Criterion of inventive step means that an invention needs to be not obvious for a so called man skilled in the art. It is therefore not an ordinary person. From the other hand a man skilled in the art does not have to be an exceptional individual in a given discipline (eg. a very talented scientist, for whom many things can be obvious). It should be an average specialist. Consequently it can be concluded that the inventive step is a somewhat subjective criterion. That is why it is often discussed. Inventions that do not comply with the inventive step criterion can be very often protected as so called utility designs (up to 10 years of proteciton).
To show the essence of the inventive step idea, one can imagine a bicycle with three wheels in a row. As such, this machine would rather not be considered as a patentable invention (even if nobody has ever constructed it, its properties and construction could be easily deducted from the prior art- a two wheel bike). However, if the same three wheel bicycle would posses properties that enhance its utility (such as speed, maneuverability or any other technical parameter) and if it could only be predicted based on eg. some very sophisticated mathematical calculations (it would not be obvious from the prior art), it would probably be a patentable invention. This non-obviousness of the parameters of this new vehicle would provide an inventive step.
One criterion of patentability – the industrial applicability- should still be clarified. This criterion was introduced to distinguish inventions from scientific discoveries. In other words, inventions must possess utility to people. Pure scientific discoveries of physical or chemical phenomena, biological processes or fragments of nature (such as geological structures, chemical compounds, parts of animals and plants), as well as mathematical theories, are not patentable. However, scientific discoveries can lead to patentable inventions, if one can prove its industrial applicability (in a very broad sense as economical utility based on technique, this includes also eg. services). What is important is that Patent Offices do not check whether a claimed industrial applicability has any practical sense. What is being verified is whether an invention could be theoretically applied to any industrial or economical activity. It is usually accomplished by answering the question “What technical problem does the invention solve”. This “problem” can sometimes be very abstract or hypothetical.
As can be seen from the above mentioned examples, invention is something intangible. In other words, it is a human thought that is an object of a patent. This means that in a vast majority of cases there is no necessity to physically construct an invention before filling in a patent application (despite how useful it could be). In the above mentioned example of a three wheel bicycle it would not be necessary to construct a vehicle before patenting it, as long as all the parameters, its construction, etc. could be predicted theoretically. However, it is the inventor’s responsibility and risk of providing accurate calculations. From the other hand it is not possible to patent an invention that is not possible according to the current science (eg. a perpetum mobile). Nonetheless, inventions that are illegal to produce or exploit according to the law, can be patentable (eg. dangerous substances). This is the case of many pharmaceutical and biotechnological inventions. Potential drugs are patented many years prior to their approval for human use (prior to conducting clinical research).
By way of digression it should be noted, that many new drugs belong to a special category of inventions- the so called biotechnological inventions. They inflict many controversies in society, among patent law specialists, businessmen and ethicists. Many issues have not been solved yet and are still being discussed. Despite this fact, the following definition of a biotechnological invention can be given:
“Biotechnological inventions are inventions of a product that consist of biological material, contain such material or of a process in which a biological material is being produced, converted or exploited”
Examples of biotechnological inventions are:
-enzymes, antibodies and other proteins
-primers, genes, vectors and other nucleic acids
-microorganisms
-cell lines
-kits (eg. diagnostic)
-drugs, vaccines and other pharmacological substances
- fermentation processes, methods of isolation and purification (of proteins, nucleic acids and other biological substances), testing methods, in vitro diagnostic methods, laboratory methods (eg. PCR), other methods of converting biological material (eg. genetic engineering methods).
Finally, it must be stated, that not all novel, non-obvious and industrially applicable inventions can be patented. Excluded from protection are:
-human body, human embryo and fetus, human stem cells
-ordinary discoveries of elements of human body (including sequence of nucleic acids [eg. of a gene], if no application [eg. therapeutic] is provided)
-methods offending human dignity (eg. method of producing a human-animal chimera)
-inventions conflicting with public order, including:
-methods of human cloning
-methods of modification of genetic identity of human stem line
-exploiting human embryos for commercial or industrial purposes (this issue is being extensively discussed with respect to therapeutic research with embryos)
-methods of modification of genetic identity of animal stem line, which can bring no important medical benefits for a human or an animal and animals, which are a result of such methods
Moreover, excluded from protection are:
-plant and animal varieties and purely biological methods of breeding plants and animals (they are protected under another law)
and
-methods of healing humans and animals, including:
-surgical methods
-therapeutic methods
-diagnostic methods
Generally speaking, this exclusion can be summarized as a ban to patent any of the above mentioned methods that are directly related to human body (eg. through a medical treatment). That is why pharmaceuticals and surgical/medical equipment can be patented (their production does not interact with human body). In some cases, however, this is not so clear. For example one could patent a method of making a model of patient’s teeth as long as dentures are produced outside of the patient’s body. From the other hand a method of producing an endoprothesis is not patentable as long as it requires a surgical step, eg. to perform all the necessary measurements.
Intellectual Property should be protected in order to ensure that one’s personal and propietary interests are not violated. Intellectual Property Law consists of two main areas: copywrights and industrial property. Copywrights are granted automatically to every creator (writer, composer, scientist, etc.) as soon as the work is published. It is only important that a creator is aware of his/her rights to pursue them in case of conflict.
Quite the opposite logic rules the industrial property law (that is patents, trademarks, utility designs, etc.). To be granted such rights, one should first apply for them.Than he/she is responsible for complying with all the requirements. Missing eg. important deadlines can lead to the lost of this right. For every industrial property asset there is a somewhat different procedure. The main steps in the granting of a patent procedure are described here. Below a few arguments for patenting of inventions will be discussed (inventions are the most probable industrial property outcomes of a scientific activity).
After making an invention, the inventor can follow one of three possible paths:
-do nothing
-keep the invention secret
-patent the invention
Taking each of those paths can be rational- depending on the character of the invention, its market potential, costs of protection, etc. Off course only the two last options constitute protection of an invention. It is in the interest of the state and the society to provide incentives for inventors to disclose their inventions. This is possible through filling in a patent application. Especially in
A patent is the highest form of intellectual property protection. Obtaining a patent gives right to gain a temporary (usually up to 20 years) exclusive right for commercial exploitation of an invention. The holder of a patent has right to prevent others from copying a patent, producing it, selling it or performing any other commercial activity with it. Granting a patent is some kind of a social deal- the inventor discloses the technical novelty of the invention, contributing to the advancement of science and technology, and in return the state grants the holder of a patent with a temporary monopoly for its exploitation.
However, sometimes it is reasonable to keep an invention as a trade secret (commonly referred to as the know-how). It is a risky strategy, because unintended disclosure of an invention can destroy both its secrecy and patentability. Moreover, sometimes unauthorized person (or entity) can fill in a patent application for an invention disclosed in such a way. Having all this considered, it is reasonable to keep an invention as a secret kow-how, if:
1) filling in a patent application could easily guide competition towards analogous, yet substantially different invention
2) the cost of a patent procedure and of sustaining protection would be higher than profits form a temporary monopoly
and/or
3) the invention is known by a limited number of people, each of whom has signed a confidentiality (or non-disclosure) agreement, which guarantees a reasonable compensation for unauthorized disclosure
Despite arguments for patenting an invention or keeping it as a trade secret, it must be stated that usually the most rational decision from an economical point of view is to do nothing with it. As was written in a page How to recognise, wheather my discovery is also an invention?, quite a lot of scientific discoveries is patentable. The vast majority of them is never patented because of lack of economical potential. Such inventions are often disclosed in scientific publications.
Finally, the arguments for patenting inventions can be summarized as following:
1) A patent can be a source of (sometimes very high) income. Patent is an intangible asset, which can be sold, licensed or contributed as an own capital into a company.
2) Patenting inventions contributes to the advancement of scientific and technological knowledge. Patents and patent applications are commonly accessible in private and public databases and constitute a comparable source of information to scientific publications.
From the two above mentioned arguments, a few another related to scientific work in a public institution can be derived:
3) Because of importance of patents and other intellectual property assets for scientific, technological and economic development, they are counted as an important part of scientific achievements of individual researchers and whole scientific institutions. According to current law in
It should be once more stated that in
4) Having patents and patent applications can help winning external grants for scientific research. Such grants can come from private companies, public sources, or private-public partnerships (such as Innovative Medicines Initiative). The reason for this is a trend to expect, also from basic science, at least a potential applicability of a planned research (this is a case eg. in a vast majority of funds available under the 7th Framework Programme). For private companies, applicability of funded research is a cardinal condition of their engagement. Having patents and patent applications, especially those that were commercially exploited, is a clear indication for a grant proposal reviewers that such a scientist excels not only in basic research, but also has fundamental knowledge about commercial aspects of his work. That is why previous implementation of scientific results, even if it was in somewhat different field of knowledge, is especially highly rated.
5) Sometimes an invention can only be practically exploited, if it is patented. This is a case eg. for biotechnological inventions with therapeutic applications. It is because in these cases a patent is granted many years prior to commercialization. This time is necessary to conduct very expensive and risky clinical research (they constitute a very important part of total costs of bringing a new drug to the market). Destruction of patentability of an invention through eg. a scientific publication contributes to the development of science, but excludes the possibility of directly improving patient’s health. The reason is that no company would invest tens or hundreds of million of dollars in clinical research of a new drug only to let the competitors use this research to introduce to the market identical generic compound. That is why patenting inventions can sometimes be considered as a pro publico bono activity.
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