The IP requirements

IP Requirements

A patent application shall satisfy some requirements, before being granted– Formal requirements– Procedural requirements– Substantive requirements

They are subject to some degree of standardization– Especially in the PCT– Especially the substantive requirements

Formal Requirements

These are meant to “standardize” the appearance of a patent application, so to speed up its handling and the calculations of the fees due.– Margins– Titles– Preferred wordings in claims– Structure of dependencies– Designation of inventor– Etc.

Procedural requirement Basically related to the time limits in

which a specific action has to be completed– Filing the minimum documents for obtaining

a filing date– Filing the claims– Filing the designation of inventorship– Claiming priority– Requesting examination– Paying a fee– Responding to an official action– Etc.

Depend on the specific IP Office

Substantive requirements

Requirements against which any patent application is checked for determining whether it may be granted– Novelty– Inventive step– Industrial applicability– Sufficiency of disclosure– (Clarity)– (Added matter)– (Unity of invention)

They determine the extent of the patent right

Novelty

A claim is new if it does not belong to the state of the art– If every single disclosure of the state of

the art cannot be read into the claim, the claim is new

– Easy to check: it is a YES/NO test– It is an a contrario test: it is not possible to

prove novelty, it is only possible to prove lack of novelty

Essential to the Novelty requirement is the definition of “state of the art”

State of the art Written publications

– Any country / Any language / Any medium – No need of actual reading or understanding

Prior use/sale of the product– Depending on the country (in the US, only local prior

use)– Depending on the features which were understandable

(unconditional sale vs. spotted in the street) Periods of grace/Secret applications

– Periods of grace allow an inventor to file even after a disclosure – first to invent

– Secret applications are often considered as state of the art for novelty only – first to file

Traditional Knowledge– See http://www.unutki.org/ (United Nations)

Novelty The claim shall be understood as if it

were read:– By a person skilled in the art– With a mind willing to understand– By giving to the words the usual meaning

they have in the relevant technical field– Having the knowledge of what was commonly

known in the art at the priority/filing date The words are usually given the

broadest possible meaning, to the detriment of the owner– As the owner will do so in later infringement

proceedings

Inventive Step

A claim shall not be obvious– It shall not be possible to arrive at something

falling into the scope of the claim by merely combining any number of teachings of the prior art

– The invention must be a “real” contribution– Again, this is an a contrario test– A very high degree of subjectivity may be

involved• Especially in mechanics, an invention is often a

combination of elements which, per se, are already known

• However, the way in which they are combined, gives an unexpected result

Inventive Step

The inventive step does not entail an “inventiveness level”, nor a “flash of genius”

It is a YES/NO test; there’s nothing such as “small invention” or “big invention”

In order to take away any degree of subjectivity, there are tests:– Problem-Solution-Approach (EPO)– Teaching-suggestion-motivation (USPTO)

These tests are devise to show that the claim is obvious: if they fail, the claim is inventive

Inventive Step

The Problem-Solution Approach requires that an incentive can be found in the prior art

In practice, such an incentive is a “bridging” TECHNICAL EFFECT, linked to the features of the second document

The skilled person always wants to improve the prior art and will add a “bridging” technical effect to the first document

The “bridging” technical effect needs not be the one specified in the application

A+B+C

Inventive Step

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Inventive Step

A+B+C

A+B

A+C

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D2

Inventive Step

A+B+C

A+B

A+C

D1

D2

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Inventive Step

A+B+C

A+B

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D1

D2

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Effect X!

Inventive Step

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D2

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Effect X!

!

Inventive Step

A+B+C

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D2

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Effect X!

A+B+C

!

Inventive Step

Industrial applicability

The USPTO considers as patentable “everything made by man under the sun”

For the EPO, an invention must be “industrially applicable”– Pure software /Computer-Implemented

Inventions– Surgical, Therapeutic methods / Dosage regimen– Plant varieties

Industrial applicability defines the very nature of a patent: it serves the industry in the broad sense (in fact, in some laws, it is specified “inclusive of agriculture”)

Sufficiency of Disclosure

A patent is an exclusive right give in exchange for the disclosure of an invention

This requirements safeguards the right of the public at large to learn the invention and avoid the need to re-discover it again

Patenting makes it impossible to keep the invention secret

It must be assessed with the eyes of a technician skilled in the art of the invention

Sufficiency of Disclosure

Sufficiency of Disclosure means that the skilled person:– Having the teachings of the patent, – And of common general knowledge– Shall be able to reproduce the invention – In the whole breadth of the claim

This requirement prevents blocking a whole technical field by claiming a technical effect without, in fact, being able to achieve it

Sufficiency of Disclosure

Writing a chemical formula does not mean that the molecule exists in reality

Writing a new DNA sequence does not mean that it corresponds to a living being

Defining a mechanical concept (e.g. high-temperature superconductive transformers), does not mean that it exists

The EPO accepts applications on perpetuum mobile (and, in most of the cases, actually refuses them on lack of novelty) see e.g. F03G7/10, H02K53/00, H02N11…

Fullerene

Clarity

Not a “true” substantive requirement However present in most jurisdictions The PCT Guidelines define a claim as clear

“If a person skilled in the art can determine the boundaries of the claimed invention with a reasonable degree of certainty…”

As any written statement may be made clearer, the EPO approaches clarity “with a mind desirous to understand”, and does not accept lack of clarity as a ground of opposition

Added matter

Not a “true” substantive requirement Present in all jurisdictions As the granted patent has retroactive

effect since filing date, it is not possible to add any technical information during prosecution

Prevents applicants from “cheating” The EPO is probably the strictest

authority in assessing whether there is new technical information or not

Added matter

Assume this is what is in the drawings, and nothing is mentioned in the text

What is it?– An elastic element?– A spring?– A helicoidal spring?

Added matter

Here we have examples of helical springs, leaf springs, gas springs and rubber elastic elements

Unity of invention

Not a “true” substantive requirement Again, present in most jurisdictions Basically, one patent=one invention It improves certainty of rights for third

parties– Competitors know that one patent on, say,

television does not contain one patent on, say, furniture

– Improves classification of patents and subsequent retrieval

A Remark

There are some requirements– Novelty & Inventive step– Industrial applicability & Unity of Invention

Which simply depend on the invention

The other requirements, i.e.– Sufficiency of disclosure,– Clarity, and – Added matter

Depend on how the application is drafted

Conclusion

A patent application shall satisfy many requirements in order not to jeopardize a sound protection of the invention

These requirements are meant to safeguard third parties against abuse of the system

But, in order to obtain a sound protection, it is fundamental to be aware and tackle each one of them properly, closely working with an IP professional

Thank you!

For further informationgfiorani@perani.com