Condensed Seminar notes
Patents
- A patent is an exclusive right granted for an invention, which is a product or a process that
provides, in general, a new way of doing something, or offers a new technical solution to
a problem. To get a patent, technical information about the invention must be disclosed to
the public in a patent application (WIPO, 2023).
What a patent must include to be granted:
- The invention must show an element of novelty; that is, some new characteristic which is not
known in the body of existing knowledge (prior art).
- The invention must involve an “inventive step” or “non-obvious”, which means that it could
not be obviously deduced by a person having ordinary skill in the relevant technical field.
- The invention must be capable of industrial application, meaning that it must be capable
of being used for an industrial or business purpose beyond a mere theoretical
phenomenon, or be useful.
- Its subject matter must be accepted as “patentable” under law. In many countries, scientific
theories, aesthetic creations, mathematical methods, plant or animal varieties, discoveries
of natural substances, commercial methods, methods for medical treatment (as opposed to
medical products) or computer programs are generally not patentable.
- The invention must be disclosed in an application in a manner sufficiently clear and
complete to enable it to be replicated by a person with an ordinary level of skill in the
relevant technical field. (WIPO, 2023)
Application:
- Patents are described in a number of different ways in the United Kingdom. Most
commonly, a patent is seen as a legal document that confers a 20-year monopoly on the
patentee.
- The patents that operate in the United Kingdom are granted by two authorities: the UK
Intellectual Property Office (UK IPO) and the European Patent Office (EPO).
- The patents that operate in the United Kingdom are known either as ‘British patents’ or
‘European patents (UK)’. British patents are issued by the IPO and are subject to British
law. European patents are issued by the EPO in Munich; a European patent (UK) is a
patent issued by the EPO and applies in the United Kingdom (gov.uk, 2023).
- Long process → need a lot to be approved
- Need to hire someone to assist with patenting as they will have specialist knowledge
- Since we left the EU, how we negotiate patents has changed
Characteristics:
- Can be classified in terms of the subject matter that they protect. In some instances, patents
are described by reference to the industry or branch of science to which the patented
invention relates (e.g. Chemical patent)
- Patents are classified according to the nature of the interest that is protected—that is,
whether it is a ‘product patent’, a ‘process patent’, or a ‘product-by-process patent’
(Oxford Law Trove, 2023)
Blocking patents:
- A blocking patent is a patent that prevents a third party from the practice or commercial
exploitation of a modified version of the device or process underlying the patented
invention.
, - When a patent stops another product or service (even if patented) from actually being
produced because its execution would ultimately need to infringe upon it, it can then be
referred to as a blocking patent. In practice companies employ blocking patents in a
variety of strategically intentional ways.
- Offensive BP = Going after someone else to stop them from doing what you want to do,
or to get leverage, or to gain a higher market share
- Defensive BP = Companies do this as they know competitors are innovating and improving
tech advancements, so they try stopping it to reduce competitors.
Bad blood → example of patenting leading to issues:
- Elizabeth Holmes:
o The counts for which Holmes was convicted related to 2014 at that time Theranos
had approx. 36 patents.
- Richard Fuisz:
o A licenced doctor and medical inventor he sold a company that made medical
training films
o Patented inventions that companies would want, then would use the licence fee
o Patented what he deemed to be a missing element from the Edison (a mechanism to
alert the patient’s doctor if something was abnormal)
- Fuisz patented a new use for existing technology, anticipating it would be worth $4million
for an exclusive licence:
o Wireless data transmission
Patents
- A patent is an exclusive right granted for an invention, which is a product or a process that
provides, in general, a new way of doing something, or offers a new technical solution to
a problem. To get a patent, technical information about the invention must be disclosed to
the public in a patent application (WIPO, 2023).
What a patent must include to be granted:
- The invention must show an element of novelty; that is, some new characteristic which is not
known in the body of existing knowledge (prior art).
- The invention must involve an “inventive step” or “non-obvious”, which means that it could
not be obviously deduced by a person having ordinary skill in the relevant technical field.
- The invention must be capable of industrial application, meaning that it must be capable
of being used for an industrial or business purpose beyond a mere theoretical
phenomenon, or be useful.
- Its subject matter must be accepted as “patentable” under law. In many countries, scientific
theories, aesthetic creations, mathematical methods, plant or animal varieties, discoveries
of natural substances, commercial methods, methods for medical treatment (as opposed to
medical products) or computer programs are generally not patentable.
- The invention must be disclosed in an application in a manner sufficiently clear and
complete to enable it to be replicated by a person with an ordinary level of skill in the
relevant technical field. (WIPO, 2023)
Application:
- Patents are described in a number of different ways in the United Kingdom. Most
commonly, a patent is seen as a legal document that confers a 20-year monopoly on the
patentee.
- The patents that operate in the United Kingdom are granted by two authorities: the UK
Intellectual Property Office (UK IPO) and the European Patent Office (EPO).
- The patents that operate in the United Kingdom are known either as ‘British patents’ or
‘European patents (UK)’. British patents are issued by the IPO and are subject to British
law. European patents are issued by the EPO in Munich; a European patent (UK) is a
patent issued by the EPO and applies in the United Kingdom (gov.uk, 2023).
- Long process → need a lot to be approved
- Need to hire someone to assist with patenting as they will have specialist knowledge
- Since we left the EU, how we negotiate patents has changed
Characteristics:
- Can be classified in terms of the subject matter that they protect. In some instances, patents
are described by reference to the industry or branch of science to which the patented
invention relates (e.g. Chemical patent)
- Patents are classified according to the nature of the interest that is protected—that is,
whether it is a ‘product patent’, a ‘process patent’, or a ‘product-by-process patent’
(Oxford Law Trove, 2023)
Blocking patents:
- A blocking patent is a patent that prevents a third party from the practice or commercial
exploitation of a modified version of the device or process underlying the patented
invention.
, - When a patent stops another product or service (even if patented) from actually being
produced because its execution would ultimately need to infringe upon it, it can then be
referred to as a blocking patent. In practice companies employ blocking patents in a
variety of strategically intentional ways.
- Offensive BP = Going after someone else to stop them from doing what you want to do,
or to get leverage, or to gain a higher market share
- Defensive BP = Companies do this as they know competitors are innovating and improving
tech advancements, so they try stopping it to reduce competitors.
Bad blood → example of patenting leading to issues:
- Elizabeth Holmes:
o The counts for which Holmes was convicted related to 2014 at that time Theranos
had approx. 36 patents.
- Richard Fuisz:
o A licenced doctor and medical inventor he sold a company that made medical
training films
o Patented inventions that companies would want, then would use the licence fee
o Patented what he deemed to be a missing element from the Edison (a mechanism to
alert the patient’s doctor if something was abnormal)
- Fuisz patented a new use for existing technology, anticipating it would be worth $4million
for an exclusive licence:
o Wireless data transmission
