This section aims to provide our target users with a small web module to enhance their IP knowledge. It targets researchers or persons who need basic IP knowledge at work.
Each module will tackle a specific subject using material and examples available from the Web.
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Patents do not give you an absolute monopoly
A common misunderstanding
It is not unusual for patents to be described as legal titles providing the holder with a monopoly to exploit their invention. This is not true - in fact, patents provide a right to prevent others from exploiting the patented invention. This negative right can result in a relationship of dependency between patents: if you obtain a patent on a basic product, a further patent can be obtained by somebody else on an improvement of this product.
In this situation, you can prevent the third party from freely exploiting his invention since the scope of protection of your patent covers his product or process, which is just a specific expression of your global invention.
This person can also prevent you from exploiting the improvement, as he holds the patent thereto. This is the case even though you hold the more global patent.
This very common situation often results in cross-licensing agreements in the interests of both parties.
What does this mean in practice?
To better understand this concept, let us consider the following example:
The windsurf case
Windsurfing exploded in the wake of James Drake and Hoyle Schweitzer's invention. They did not invent the windsurf principle but the necessary flexible joint between the mast and the board that allowed the mast to swivel in all directions. This was an essential element that made the successful exploitation of the windsurf idea possible.
Their US3487800 patent can be found here.
v3.espacenet.com
This patent enabled the two inventors to prevent others from selling windsurfs with such a flexible joint.
This invention is expressed as follows in the patent claim:
1. A wind-propelled vehicle comprising body means, an unstayed spar connected to said body means through a joint which will provide universal-type movement of the spar in the absence of support thereof by a user of the vehicle, a sail attached along one edge thereof to the spar, and a pair of arcuate booms, first ends of the booms being connected 'together and laterally connected on said spar, second ends of the booms being connected together and having means thereon connected to the sail such that said sail is held taut between the booms.
A couple of years later, another inventor, Hannes Marker, obtained a patent on an improvement of this mast-board link, enabling an additional degree of movement.
v3.espacenet.com
Here the patent claim reads as follows:
1. Apparatus for connecting a sailing mast to a sailing board having a longitudinal dimension comprising a linking member, means for pivotably attaching said linking member to the foot of a mast, connecting means for connecting said linking member to a sailing board, said connecting means comprising means for moving said linking member in a plane along the longitudinal dimension of the sailing board so that the mast can be lifted, fixed and firmly maintained in at least two positions along the longitudinal dimension of the sailing board.
This patent uses the universal type of movements covered by the initial inventors and as such depends on the initial windsurf patent of Schweitzer and Drake: Marker needs Schweitzer and Drake's authorisation to exploit his invention and therefore does not have an absolute monopoly. If Schweitzer and Drake want to exploit Marker's invention, they will also need his authorisation. A cross license can resolve this blocking situation.
Such cases are quite common, especially in the chemistry and biotechnology fields. A new chemical compound or gene sequence can be broadly protected as such. A new application or use of these products can also be protected by a later patent. In this case, the latter inventor requires the authorisation of the first patent holder in order to exploit his invention.
What can I do about this situation?
A researcher or a research organisation must be fully aware that a granted patent on a product or process they have developed does not automatically give them the right to freely exploit this product or process. Rights resulting from earlier patents can be detected by a specific patent search aimed at defining your "freedom to operate". This complex search must be left to good patent search professionals having a thorough knowledge of patent law. You can contact your closest PATLIB Centre or your Patent Attorney for this purpose.
patlib.european-patent-office.org
www.european-patent-office.org
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