This section is aimed at providing 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 on the Web.
|
|
The role of a patent office in the innovation process
A patent office is a governmental organisation in charge of granting patent rights and often also other industrial property titles like trademarks and designs. Inventors or researchers are usually represented by an attorney and do not deal directly with patent offices.
In addition to this role, patent offices are developing a wider range of activities in the patent awareness and patent information fields. They can often act as a central point for all advice relating to intellectual property and innovation issues.
What does a patent office do once your patent application is filed?
The main steps a patent application will undergo after filing are as follows. These steps are illustrated with a genuine example:
- The Patent Office first checks if your application complies with the formal requirements. These requirements are administrative in nature: completeness of the file, payments of fees, etc.
This European patent application EP0822788 relates to a drug release coated stent. Stents are tiny metal mesh tubes which are placed in the artery after an interventional procedure is performed to provide support inside the artery to keep the vessel open. This patent relates to an improvement to such a stent.
Its initial first claim reads as follows:
-
A stent for implantation in a body comprising a tubular metal body (10) having open ends and an open lattice sidewall structure and a layer on the surface of said sidewall structure, said layer comprising a hydrophobic elastomeric material incorporating an amount of biologically active material therein for timed delivery therefrom.
This claim indicates the scope of protection the patent applicant seeks.
- A documentary search is conducted in order to detect the closest prior art. This search aims to check what has been disclosed to the public before your patent application was filed and that could call into question the novel and inventive nature of your invention.
In our example, the best prior art found against this stent patent application includes the following patent documents published before the patent application was first filed.
WO9112779
A prosthesis for insertion into a lumen to limit restenosis of the lumen. The prosthesis carries restenosis-limiting drugs which elute after the device is positioned in the lumen.
EP0623354
The invention provides a method for making an intravascular stent by applying a solution to the body of a stent which comprises a solvent, a polymer dissolved in the solvent and a therapeutic substance dispersed in the solvent. The solvent is then evaporated.
- An examination is then performed. This examination consists in a written or sometimes oral negotiation between the patent applicant (usually represented by an attorney) and the patent office (represented by a patent examiner). During this procedure, the patent applicant will try to obtain the largest scope of protection based on his initial patent application. The examiner is in charge of ensuring that the patent eventually granted respects the patentability criteria: the patent applicant cannot get protection on something that was disclosed before the patent was filed or that would have been obvious for a specialist in the technical field of the invention based on what was publicly available prior to the patent filling date.
To examine a patent, the examiner considers the results of the prior art search. This search must contain all information available or disclosed to the public prior to the patent filing date and that can be held against the initial patent application scope of protection.
Above is an extract of the examination report relating to this patent application, where the examiner objects to the novelty of the applicant's claim.
- Based on the results of this "negotiation" the patent office rejects, modifies or grants the applicant's initial claims. At the European Patent Office, an initial patent application results in a granted patent in about two third of the cases.
Above is the first claim of the granted patent, resulting from the patent grant procedure. One will notice the restrictions added to the initially sought scope of protection resulting from the examination procedure.
- After a grant, patent offices usually oversee opposition procedures whereby the patent office's decision can be challenged.
Some important points
- Not all patent offices perform a search and an examination. This means that a granted patent that has not undergone such a procedure does not offer the same solid protection as a patent that has gone through all these steps.
- A patent application is in most cases published 18 months after it has been filed. The granted version of a patent is also published after its grant.
- Many offices, including the US and European Patent Office, offer Internet tools for accessing all the patent procedure documents online.
Further reading
More on the patentability criteria
A brief overview from the UK Patent Office: www.patent.gov.uk
The guidelines for the EPO's substantive examination: comprehensive document indicating all the rules to be followed by examiners when treating an application:www.european-patent-office.org.
Accessing the procedural data of a patent file
For the European Patent Office: epoline® file inspection: www.epoline.org
For the US patent Office PAIR: portal.uspto.gov
The full details of the procedure of the patent given as an example can be checked here: ofi.epoline.org
This procedure resulted in more than 80 exchanges between the office and the applicant, showing the complexity of the patent grant procedure.
Some innovation supporting activities of patent offices
Patent Search services
PATLIB: a European network of libraries including patent offices providing patent search services to the public: patlib.european-patent-office.org
EC-funded initiatives involving patent offices
IP-europe, a project to improve awareness within the European business community of how IPR systems may be used to commercial advantage: ip-europe.org
The Good practice guide resulting from the Linking Innovation with Intellectual Property initiative: www.patentsoffice.ie
Other Patent Office initiatives (non-exhaustive list to give an initial idea of the patent offices' offerings in this field)
IP Valuation tool developed by the Danish Patent Office: IP Score®:www.ipscore.dk
Various IP services offered by the French Patent Office: www.inpi.fr
Innovation supporting activities of the Dutch patent Office: www.bie.nl
|
