What you need to know about patents

Claims define what is patented

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

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), and no particular interpretation may be binding unless and until there is litigation.  Thus, although claims in this technology landscape were analyzed from the plain language and the specification, scope of the claimed inventions may not have always been precisely determined.

A patent application is not the same as a patent

In the countries where the patents analysed in this landscape were filed, patent specifications are published 18 months after the earliest filing. The publications contain the claims of the application as filed.  Often, the claims in the application 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. The specification of a granted patent will usually be the same as when published, but it also may change as the result of a successful opposition or re-examination.

The truth about international patents

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.

Confusion and misunderstanding about “international patents” arises sometimes from the process of pursuing patents through the World Intellectual Property Organisation (WIPO). When looking at a WO (“World”) published patent application, many people erroneously, but understandably, conclude that it is an application for a patent that will be valid in multiple countries. However, it is not a patent, and indeed it may never reach the national application phase or become a patent in any country.

Through an international treaty (Paris Convention Treaty), a group of countries agreed to offer 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” (related technology) 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, an application filed in Canada could wait up to one year before filing the application in Mexico under the same “priority date”. This would give an applicant time to decide whether 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 ((WIPO) to receive and process the applications. But now, the applicant has one year to file at the WIPO office, preserving rights and original filing date in those designated countries without having to go to the expense of actually filing in each country. 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 may have up to 30 months from the original filing date (the date the application was filed in the home country) to decide whether or not to file and undergo these expenses in each of these other countries.

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.

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.  The cost may vary from nil to high, and licenses may be exclusive or non-exclusive.

The holder of an exclusive license can control the rights in much the same way as the “owner” of the patent.  However, unlike the ownership of a patent, which is a matter of public record, licenses in most countries can be private. Unless the parties to a license choose to reveal the relationship, it can be impossible to obtain information about it.