Lecture 6 - Patent Law II
1. Validity of a patent
This can still be challenged after the patent was granted. The report attached to a (Dutch) patent
gives some information on the value, valid or not, something about the examiner’s thoughts and
actions.
The first thing you ask yourself is whether the patent is valid. It’s been granted by the EPO, was the
Netherlands designated for the country for which it was valid, have the yearly payments been paid;
the formalities should be there.
Then you look at the filed report, that is in the EPO (and available on internet) and you see what the
examiner’s discussion was and what kind of literature he found. Possibility to oppose at the EPO in
two instances. You need to find all prior art (including that not found by the PO) because often your
client works in the same area than the patentee. He knows more about things said during a
presentation or literature/lecture than found by the PO. Then, you go through the following list to
check the patent’s validity:
I. Patentable subject matter: technical character is needed, medical treatment (method as
such), biological methods, creation of a new animal or plant race (if you change genes of the
dog, not having to do with creating a new dog brand: can be patented) cannot be patented.
Something against good morals is not patentable.
II. Novel: nowhere disclosed in the world, in any language etc. It has to be in the past. Can also
be an oral presentation and it should have each and every part of the invention. Inside the
company it is kept secret, or outside the company people have signed a confidentiality
agreement or really understand that it’s a secret, it’s not deadly for the patent. Inventing
something and putting it on the market or showing it at an exhibition: such disclosures are
deadly.
III. Inventive: it’s something that’s not obvious for the skilled man. He’s not overly skilled, so not
the Nobel prize winner, someone who is pharmacist or doctor. You compare the closest prior
art and the invention, was it obvious for the skilled person or not?
IV. Sufficiency of disclosure of the invention: you can rework the invention. So, after 20 years
people can use the invention or use it to invent other things. It should work like it says in the
invention.
V. You can’t have extended subject matter. Later on, you cannot get more than what was stated
in the original document (article 132 (2) EPC). If, after granting there is an opposition
procedure, article 132 (3) EPC says that you cannot have more protection than the granted
patent gives you. The patent doesn’t give you extend protection.
VI. Is the person who says he’s entitled to the patent, the rightsholder? If he is not the inventor
and he knowns who was the inventor but, without inventor’s approval, has applied for
himself. You can be co-owner of a patent. If someone stole your invention, you can claim the
whole invention or you can ask for the invalidity. If someone under the duty of confidence
nevertheless discloses, you still have 6 months to ask for a patent. Then it’s a disclosure in
bad faith, so an exception to the rule of absolute novelty. If it’s there in Swahili and nobody
understands it, this doesn’t matter. If you’re hesitant of getting a patent, there is the risk of
someone else inventing the same and then you have to stop manufacturing what you are
making. They disclose the invention in a local newspaper in France where nobody ever reads
it, but if they’re confronted with someone else saying they have a patent on it, they can say it
was already public.
1. Validity of a patent
This can still be challenged after the patent was granted. The report attached to a (Dutch) patent
gives some information on the value, valid or not, something about the examiner’s thoughts and
actions.
The first thing you ask yourself is whether the patent is valid. It’s been granted by the EPO, was the
Netherlands designated for the country for which it was valid, have the yearly payments been paid;
the formalities should be there.
Then you look at the filed report, that is in the EPO (and available on internet) and you see what the
examiner’s discussion was and what kind of literature he found. Possibility to oppose at the EPO in
two instances. You need to find all prior art (including that not found by the PO) because often your
client works in the same area than the patentee. He knows more about things said during a
presentation or literature/lecture than found by the PO. Then, you go through the following list to
check the patent’s validity:
I. Patentable subject matter: technical character is needed, medical treatment (method as
such), biological methods, creation of a new animal or plant race (if you change genes of the
dog, not having to do with creating a new dog brand: can be patented) cannot be patented.
Something against good morals is not patentable.
II. Novel: nowhere disclosed in the world, in any language etc. It has to be in the past. Can also
be an oral presentation and it should have each and every part of the invention. Inside the
company it is kept secret, or outside the company people have signed a confidentiality
agreement or really understand that it’s a secret, it’s not deadly for the patent. Inventing
something and putting it on the market or showing it at an exhibition: such disclosures are
deadly.
III. Inventive: it’s something that’s not obvious for the skilled man. He’s not overly skilled, so not
the Nobel prize winner, someone who is pharmacist or doctor. You compare the closest prior
art and the invention, was it obvious for the skilled person or not?
IV. Sufficiency of disclosure of the invention: you can rework the invention. So, after 20 years
people can use the invention or use it to invent other things. It should work like it says in the
invention.
V. You can’t have extended subject matter. Later on, you cannot get more than what was stated
in the original document (article 132 (2) EPC). If, after granting there is an opposition
procedure, article 132 (3) EPC says that you cannot have more protection than the granted
patent gives you. The patent doesn’t give you extend protection.
VI. Is the person who says he’s entitled to the patent, the rightsholder? If he is not the inventor
and he knowns who was the inventor but, without inventor’s approval, has applied for
himself. You can be co-owner of a patent. If someone stole your invention, you can claim the
whole invention or you can ask for the invalidity. If someone under the duty of confidence
nevertheless discloses, you still have 6 months to ask for a patent. Then it’s a disclosure in
bad faith, so an exception to the rule of absolute novelty. If it’s there in Swahili and nobody
understands it, this doesn’t matter. If you’re hesitant of getting a patent, there is the risk of
someone else inventing the same and then you have to stop manufacturing what you are
making. They disclose the invention in a local newspaper in France where nobody ever reads
it, but if they’re confronted with someone else saying they have a patent on it, they can say it
was already public.
