Unit 1, Patents, Part 1

1. Comprehensive Overview of Patents

A patent is a limited exclusive right granted by a government to protect an invention. Historically, rulers issued patents for nearly any good or service, regardless of whether an actual invention was involved. For instance, a monarch might grant a patent for salt to a loyal ally. In contemporary times, governments have narrowed the scope of patents to cover inventions only. The Republic of Venice pioneered one of the earliest modern patent systems. Initially, the term of a patent was set at 14 years twice the duration of a typical apprenticeship. This was later extended to 17 years from the date of grant. Today, the standard term of patent protection in most countries is 20 years from the filing date of the application.

1.1 What is a Patent?

A patent typically provides the patent owner with the exclusive right to control who may manufacture, use, sell, offer for sale, or import any product or process defined by the patent claims. Patent claims are structured statements that define the scope of the invention being protected. To be granted a patent, the invention must generally be new (novel), involve an inventive step (be non-obvious) in light of the prior art, and be industrially applicable. The term “prior art” refers to all publicly available knowledge at the time the patent application is filed.

In addition to these criteria, there are several other legal requirements that must be fulfilled to obtain a patent. For example, the subject matter of the invention must be eligible for patent protection under the applicable law, and the patent application must disclose the invention in a manner sufficiently clear and complete.

Professional Tip
It is essential to file a patent application before publicly disclosing any significant research findings that could lead to a valuable product or technology. This is particularly important for research institutions, where the early publication of academic work is often a top priority.

To prevent the publication of a research paper in a journal or a presentation at a conference from undermining the novelty of a patent application in jurisdictions where protection is sought, academic institutions may implement an internal publication clearance process. This process reviews researchers’ submissions to journals and conferences to ensure compliance with patent filing requirements.

In many countries, patents are granted through substantive examination systems, in which a patent examiner thoroughly evaluates the application. As part of this process, the examiner compares the claims with the relevant prior art to assess whether the invention represents a legally sufficient advancement in the field.

Some countries operate registration-based patent systems, in which a patent is granted upon fulfilment of certain formal requirements, without substantive examination. In such systems, the validity of the patent in relation to prior art is not assessed unless and until the patent is challenged before a court.

A patent is presumed valid from the moment it is granted unless and until it is successfully challenged or revoked. Conversely, a patent may be found invalid if it lacks novelty or does not meet other legal requirements. In many jurisdictions, patents are presumed valid unless proven otherwise, particularly where the patent has been granted following substantive examination.

Patent laws around the world generally provide protection for various types of inventions. Many patent systems strive to ensure equal treatment for all inventions, regardless of their nature. When individuals refer to patents, they are typically referring to “patents of invention,” which are known as utility patents in the United States. These patents protect inventions such as machines, processes, chemical compositions, and other innovations that derive value from their utility.

Some countries also offer protection for certain types of inventions through utility model registrations, which are also referred to as innovation patents, utility innovations, or short-term patents. The requirements for registering a utility model are generally less stringent than those for obtaining a patent of invention.

Because the skills and knowledge required to draft a utility model application are comparable to those needed for drafting a patent application, this manual is also applicable to utility model registrations.

In practice, utility models are often used to protect incremental innovations that may not meet the requirements for a patent of invention for example, they may lack an inventive step. The term of protection for utility models is typically much shorter than that of standard patents.

In some jurisdictions, patent offices do not conduct substantive examination of utility model applications before registration. As a result, the exact scope and enforceability of the rights granted may remain uncertain until a dispute arises between the patent owner and another party. Additionally, in certain countries, utility model protection is available only for specific technological fields and is limited to products rather than processes.

1.2 What Can Be the Subject of a Patent?

Let us examine U.S. Patent No. 6,434,955 B1, issued on August 20, 2002, titled “Electro-Adsorption Chiller: A Miniaturized Cooling Cycle with Applications from Microelectronics to Conventional Air-Conditioning.”

Abstract:
A novel modular and miniature chiller is proposed that symbiotically combines absorption and thermoelectric cooling devices. The seemingly low efficiency of each cycle individually is overcome by combining them. This electro-adsorption chiller incorporates only existing technologies. It can attain high cooling densities with high efficiency, while being free of moving parts and comprising harmless materials. The governing physical processes are primarily surface rather than bulk effects, or involve electron rather than fluid flow. This insensitivity to scale creates promising applications in areas ranging from cooling personal computers and other microelectronic devices to automotive and room air-conditioning.

Although the patent examiner ultimately found the invention to be patentable, they reviewed nearly 15 prior art references and used 2 of them to reject the claims of the application as originally filed. The issued patent contains 19 claims in two sets: one set of 11 device claims and a second set of 7 method claims.

Patent Categories

Let us now explore some common categories of inventions that are typically patented.

Mechanical Devices and Articles of Manufacture
Mechanical devices and articles of manufacture are among the most traditional types of inventions protected by patent law. As a result, the prior art in these fields can often be extensive and long-standing. For instance, a modern patent applicant seeking to protect an invention related to specialized hockey skates might not be surprised to find that an 1860s patent is cited by an examiner to demonstrate that at least one claim in the modern application reads on the prior art. When a claim reads on prior art, it means that the prior art discloses subject matter that anticipates the claim.

Processes and Methods
Inventions can also take spiral form of processes or methods. Many of these are closely related to physical devices. A patent applicant is not restricted to using only one type of claim; therefore, a patent application may include both apparatus and method claims. For example, an inventor can seek patent protection for both a new apparatus for filtering and purifying plant extracts and a method of using that apparatus.

Chemical Compositions or Compounds
Inventors often seek patent protection for chemical compositions, particularly in fields such as pharmaceuticals, biotechnology, materials science, and petrochemicals. A notable historical example is the patent for acetylsalicylic acid, a chemical compound known for its ability to relieve headaches. In fact, patents in the pharmaceutical industry are often among the most profitable on an individual basis. Because patent applications must be filed before any public disclosure, and because extensive testing is required for new drugs, it is common for pharmaceutical companies to file numerous patent applications for various compounds while they are still in the early stages of development. As a result, many of these applications are eventually abandoned before grant, as the applicant may later determine that the compound is ineffective or unsafe.

Isolated and Characterized Molecules
In many countries, molecules that have been isolated and characterized in terms of their function and potential utility may be eligible for patent protection.

Genetic Organisms / Gene Sequences
Some countries offer patent protection for genetic organisms. Where applicable, such inventions must be associated with a specific functional purpose. However, a mere nucleic acid sequence without an indication of function is not considered a patentable invention. In cases where a sequence or a partial sequence of a gene is used to produce a protein or a part of a protein, it is necessary to clearly specify which protein or part of a protein is produced and what function that protein or part of a protein performs.

The issue of the patentability of genetic materials remains contentious, and in some countries, these materials are not considered patentable subject matter. Any patent application in such jurisdictions that claims naturally occurring genetic sequences may be rejected on the grounds that the sequence is a product of nature.

Professional Tip
Many national patent laws contain prohibitions against granting patent protection for inventions relating to methods of treatment of the human or animal body. Therefore, it is essential to carefully consider these restrictions when drafting claims for new uses of known pharmaceuticals or for methods of treating medical conditions using novel compounds.

Computer Programs
There has been considerable debate regarding the extent to which computer programs should be considered patentable. Different countries have adopted varying approaches to this issue. In many jurisdictions, computer programs per se—written in a programming or machine language are not patentable. However, a software-implemented invention may be considered patentable subject matter if it provides a technical solution to a technical problem, for example in the form of a system, method, or apparatus for achieving a specific technical result through the execution of a computer program. In some countries, a computer program may also be patentable if it implements a useful function in a novel and non-obvious manner (e.g., by enabling the program to process data more efficiently and rapidly).

This manual will proceed under the assumption that software-implemented inventions are patentable, while pure mathematical algorithms or equations are not.

Improvements
The majority of patents are directed to inventions that represent improvements upon prior inventions. An improvement patent is a patent that claims an enhanced or improved effect in comparison to an earlier invention.

Example
Inventor A holds a patent for an apparatus used to fill medicine bottles. Later, Inventor B is granted a patent for a filling apparatus that constitutes an improvement over Inventor A’s machine. Inventor B’s invention fills the bottles more quickly and with less spillage, using a novel method.

Even though Inventor B holds a patent on the improved machine, they may not be able to exploit their invention without the consent of Inventor A if it falls within the scope of patent A’s claims. In such cases, consent is typically obtained through licensing negotiations, in which both parties recognize the commercial and financial benefits of collaboration. (Whether a licensing agreement is ultimately reached, and which party pays more for the license, will depend on their respective negotiating positions and the specific circumstances of the case.)

It is also important to remember, in the context of this example, that patents are territorial in nature. This means that if Inventor A has obtained a patent only in the United States, Inventor B is free to manufacture and sell the improved machine in any other country (provided that no valid patents in those countries cover the scope of Inventor B’s invention).

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The Secretariat of WIPO assumes no liability or responsibility with regard to the transformation or translation of the original content. World Intellectual Property Organization (WIPO) (2023). WIPO Patent Drafting Manual, Second edition. Geneva: WIPO. DOI: 10.34667/tind.44657