What you NEED to know about patents

Claims define what is patented

The claims are the most important part of a patent. Not the title, not the text, not the examples, and not the figures.

It is the claims that define the boundaries of the patent owner’s rights. Remember that the patent owner’s rights are exclusionary: she may exclude others from making, using, selling, offering to sell, and importing the patented invention (e.g., a product or a process) and importing a product made by a process patented in the importing country. To determine if someone is infringing a patent, that is making, using, etc., without the patent owner’s permission, the allegedly infringing product or process is compared only to the claims.

Don’t fall into the trap of concluding that the title or the abstract or the general description found in the text of the patent indicates what is patented. For example, United States Patent No. 6074877 is titled “Process for transforming monocotyledonous plants”. From the title, it sounds like these patent owners have protected a transformation process(es) for transforming all monocot plants. Examination of the claims shows, however, that only transformation of cereal plants is protected, and furthermore, that the method involves wounding an embryogenic callus or treating an embryogenic callus with an enzyme that degrades cell walls prior to transferring DNA into the cells with Agrobacterium. A bit different from what the title implied.

Yet, claims cannot to be interpreted in a vacuum. Although claims define the invention, the scope of the claimed invention is not always clear from reading the plain language of the claim. Claim interpretation can be difficult; a proper analysis is done by reading the claims in the context of the specification and in the context of the “prosecution history” (the back and forth negotiations between the patent applicant and the patent office regarding the claim language). In the case above, for example, several terms in the claims (e.g., “cereal plants”, ” embryogenic callus”, and “enzyme that degrades cell walls”) are unclear without additional insight hopefully provided by the specification and prosecution history.

Claims in this white paper and the claims written in “plain English” were analyzed from the plain language and the specification. The prosecution history was not examined. Thus, scope of the claimed inventions may not have always been precisely determined.

A patent application is not the same as a patent

A patent application is NOT the same as a patent. Claims in a published patent application have not been examined by a national patent office and may not be representative of a scope that will ultimately be granted.

During the application process, patent specifications are published 18 months after the earliest filing. The publications contain the claims as filed. Sometimes the claims are written much more broadly than is actually patentable. As the application is examined by a patent office and claim language negotiated, the claims may shrink in scope. In contrast, the specification of a granted patent will usually be the same as when filed; new matter is not allowed to be added to the text after it is filed.

Because the claims in an application are what the applicant hopes for and not what she will necessarily receive, it is important to know whether you are looking at a granted patent or a patent application.

How do you tell the difference between a granted patent and a patent application? Although every country uses its own system of identifying granted patents, some general guidelines will assist you for the major jurisdictions.

  • United States: until 29 November 2000, all publications were issued patents. Currently, the United States identifies patents with a 7-digit number followed by a B1 (indicates a patent not previously published) or a B2 (indicates a patent previously published). E.g., US 6,174,724 B1, shown below.

    Patent applications are indicated with the year as a 4-digit number and a publication number followed by an A1 (for the first publication), A2 (for republication) or A9 (corrected publication). E.g., US 2001/0002490 A1, shown below.

  • Europe: patents are indicated with a 7-digit number followed by a B1, e.g., EP 0 458 846 B1 (shown below). A B2 number indicates that the claims have been modified after grant.
    Patent applications use the same numbering system but the number is followed by A1, A2, etc., e.g., EP 0 955 371 A1 (shown below).
  • World Intellectual Property Organization (WIPO): often simply called PCT (Patent Cooperation Treaty) applications, publications from WIPO are only patent applications. The publication numbers have a WO, which stands for “world” followed by the year as 2 digits, followed by a publication number, and A1 (first publication), A2 (second publication), etc. e.g., WO 00/34491 A2 (shown below).

The truth about international patents

There is no such thing as an international patent.

A patent is awarded by the government of a country and is valid only within its territorial boundaries. To obtain a patent that is valid in a particular country, a request must be made in that country’s patent office.

The confusion and misunderstanding about “international patents” arises sometimes from the PCT process of pursuing patents. When looking at a PCT application, many people erroneously, but understandably, conclude that it is an application for a patent that will be valid in multiple countries. Indeed on the front page of a PCT application (presented below), in the upper right corner there is a heading titled “Designated states” followed by a list of two letter codes. Each of those codes stands for a country (e.g., AU, Australia; CA, Canada; CN, China, and so on). There can be as many as about 110 countries listed. However, this list does not mean that the application is a patent, or even will become a patent, in all of these countries.

The international (PCT) application is a “placeholder” application for national filings.

OK then, what does this list mean? Through an international treaty (Paris Convention Treaty), a group of countries agreed to not discriminate against each other by affording patent applicants in these countries a one-year period in which to file an application in one of the other countries without losing the benefit of their filing date. The advantage is that any “art” that became known after the original filing date in the home country but before the filing date in another country could not be cited against the application. Thus, for example, if you originally file an application for your invention in Canada, you could wait up to one year before filing the application in Mexico. This would give you time to see if the costs of filing in other countries is justified.

Later, a second treaty (Patent Cooperation Treaty (PCT)) established another route to delay the additional filings in other countries. In this method, an international office was set up (World Intellectual Property Office (WIPO)) to receive and process the applications. But now, the applicant has one year to file at the WIPO office and by designating member countries she preserves her rights and original filing date in those designated countries without having to go to the expense of actually filing in each country. This saves an enormous amount of money! Eventually to obtain a patent in these countries, the application does need to be filed in the national patent offices (the process is called “conversion”), pay fees, have translations done and comply with the regulations of each individual office. Depending on some procedural issues and fee payments, the applicant has either 20 months or 30 months from the original filing date (the date the application was filed in the home country) to file in each of these other countries. Given the costs, most applications are filed in a few other countries at most.

What is ownership of a patent

The legal owner of a patent is designated as the “Assignee” on United States patents and as the “Applicant” on patents in the rest of the world. However, the rights of a patent holder are like a bundle of sticks, and only one of the sticks is legal ownership.

Patent law gives the patent owner the right to exclude others from making, using, offering for sale, selling, and importing the patented product and from using the patented process, as well as using, offering for sale, selling, or importing a product obtained directly from a patented process. These rights are tradeable. The typical form of trade is a license, in which some or all of the rights may be transferred. For example, the patent owner may license only some of the claims in a patent, all of the claims but only in a particular field of research, all of the rights but only in certain countries, or the right to make and use but not the right to sell. Other types of licenses may also be granted.

Unlike the ownership of a patent, which is a matter of public record, licenses can be private. Unless the parties to a license choose to reveal the relationship, it is impossible to know about.

In this paper, the legal owner is noted. The cautionary note is that the legal owner may not be the party that is in control of the rights you want access to.