There has
been a lot of interest in patent protection in the last two years. This is not surprising, with the government's
initiative in developing a knowledge-based economy. Companies engaged in Research and Development
will want to see that the fruits of their labour is not appropriated by
competitors; the Patent Act is one of the main ways to protect such
intellectual assets. A patent is a
powerful anti-competitive device.
What is a
patent?
A patent,
when granted by the government, gives the owner an exclusive right to
commercially exploit the invention including the right to import, manufacture
and sell the patented product.
For an
invention to be patentable, it will have to be new, not obvious and capable of
industrial application.
Why the
need to have some understanding of patent protection?
It is
important for business firms to have some appreciation of patent laws. This is because a patent can give powerful
legal protection against competition; giving a firm the much needed lead-time
in marketing a new product.
Even if a
trader is not in the business of developing new products, it is useful to be
armed with some understanding of patent laws.
This is because the simplest of products may be protected by a
patent. A firm, which unwittingly did
not buy from the patent owner, may be liable to a claim for patent
infringement. A basic understanding of
patent protection may save the firm from paying damages or legal costs to the
patent owner.
The
uninitiated may be surprised by the large variety and number of day to day
articles that are covered by patents.
Patents have been granted to wall hooks (such as the "quick release
3M hook"), adhesive patches for cooling fever, tennis rackets, chairs, locks, building equipment and
landscaping materials. There are as many
patents covering day to day articles as there are covering cutting edge
technology. An idea or product need not
be complex before it can be considered as a patentable invention. A simple idea can be protected if it
satisfies the requirements of patentability which will be discussed below.
In the last
year or so, there have been a lot of interest in internet patents. Basically, these are patents protecting a
method of doing business over the internet.
Typically, it is the dot-com type of firms that are interested in
applying for such patent. Such patents
if granted can be effective in differentiating one's business model from the
rest of the field. A good example is
the Amazon “one-click” patent.
One way to
appreciate the types and variety of articles or processes which are covered by
patents is to visit the United States Patent Office's web site at www.uspto.org.
Overview
This
article aims to provide the reader a basic understanding of the following
topics:
a)
Requirements for patentable invention
b)
Process involved in getting patent protection
c)
Enforcing a patent against an infringer
d)
Defending a patent claim
When does
an idea qualify as a patentable invention?
In order
for an invention to be patentable, the invention must meet all of the following
requirements:
a)
It must be new
b)
The advancement or
development from the prior art (existing technology) must not be obvious
to the average person in the relevant industry (commonly referred to as the
"non-obviousness" or "inventiveness" test)
c)
The invention is capable of industrial
application
Novelty.
For an invention to be new, it must not have been previously made
available to public e.g. previously disclosed to the public in a
publication. Publication includes a
written description, which has been made available to the public anywhere in
the world.
Non-obviousness.
Not only must the idea be new, it must also be inventive. If an idea is an obvious step to take from
what is already known, it would not be a patentable invention. Mere workshop improvement will not be
considered as inventive. An idea may be
new because it contains a feature that is not found in any other product of the
same nature. This satisfies the first
requirement of novelty. It is then
necessary to ask if the development is
obvious . Whether an idea is obvious
will have to be asked from the viewpoint of a person of ordinary skill in the
relevant field (in more legalistic terms: the unimaginative person skilled in
the art).
Industrial applicability. This last requirement is not usually a
problem. It is meant to exclude ideas
which do not have any industrial use.
How to get
patent protection?
Once you
have come up with an idea which you believe qualifies for patent protection,
you should not disclose the idea to anyone except those who signed an
undertaking of confidentiality i.e. a non-disclosure agreement.
An
invention needs to be kept secret because the invention must be new at the time
of filing at the patent office. Once an
invention is disclosed prior to filing, it may not be considered as new.
Patent
protection is territorial in nature.
There is no such thing as a world wide patent. This means that a person who wishes to get
protection in country A will have to apply to the patent office of that
country. A patent granted in country A
will not give protection in country B.
The date
given in the country of first filing is called the priority date. This date is important for the purposes of
determining novelty and obviousness. If
another person comes up with the same idea and disclosed it after the priority
date, the novelty in the patent is still safe.
If the invention is disclosed before the priority date, the invention
will not qualify for a patent.
The Paris
Convention is an international treaty between countries which give a foreign
applicant the right to rely on the priority date. The following is a useful illustration on the
application of the treaty: An inventor files a patent in his home country Singapore Malaysia ,
Indonesia and China Malaysia Malaysia , Indonesia
and China is still safe
because he is able to claim priority based on the country of first filing i.e. Singapore
1 February 2000 (priority date) : First
Filing in Singapore
1 March 2000 : Disclosure
of invention
1 June 2000 : Filing
in Malaysia, Indonesia and China
Applications in Malaysia, Indonesia and China are still protected even through the invention was disclosed before filing in these countries.
Under the Paris Convention, overseas applications have to be filed within 12 months of the priority date.
There is
another convention known as the Patent Cooperation Treaty. The PCT essentially allows inventors to defer
the national filings in overseas countries to up to 20 or 30 months from the
priority date. The PCT route allows for
a longer “wait and see” period before the applicant needs to decide on the
countries in which he requires patent protection. There are advantages and disadvantages in the
PCT system; you should ask your patent attorney to advise you on whether it
best suits your needs.
What is in a patent?
The
specification of the patent document describes and defines the invention. It has a description and claims. The description discusses the prior art,
describes the problems solved by the invention, and the practical application
of the invention. The most important
part of the specification is the claims.
The claims define the limit of the patent holder's monopoly and
differentiate the invention from the prior art.
Patent
specifications are prepared by patent attorneys who have received specialised
training for this purpose. Patent
attorneys usually have different technical background such as electronics,
mechanical, engineering or biotechnology.
The drafting of the patent specification should be left to experienced
professionals. You may feel that you are
proficient in writing a technical report; however, special training and years
of experience is required to draft an airtight specification (in particular,
the claims) so as to forestall a competitor from "designing around"
the patent. Also, skilful drafting is
required to avoid prior art; otherwise, the patent may be invalidated because
the specification fails to adequately distinguish itself from the prior art.
Enforcing a
patent
Markings
such as "Patent no. xxxxx" found on products are meant to put the
public on notice that these products are protected by a patent. If a person chooses to infringe a patent
despite knowing the existence of a patent, he will be liable for damages. An infringer who does not have any knowledge
of the existence of a patent or reasonable ground for believing so, will not be
liable for damages. This is the reason
for warning notices of patents in newspapers.
The patent
owner will be able to sue sellers, distributors and manufacturers of goods
covered by the patent. If the patent
owners are successful in the litigation, the court will order:
a)
an injunction to restrain the defendant from
infringing the patent;
b)
the defendant to pay damages to the Patent Owner or
pay the profits made by the infringer;
c)
delivery up of the remaining infringing
materials.
If the
patent holder is able to show that there is some basis that his patent has been
infringed infringement and also shows that damages will not be a sufficient
remedy if he is to wait for a trial, the court may grant an urgent injunction
even before the court gives its final decision.
This is a very effective means in dealing with an infringer.
What
happens if you are sued for patent infringement?
In the case
of infringement, the patent owner usually issues a demand letter requiring the
trader to stop selling the goods which are said to be infringing the patent;
and if the trader does not comply with the demand within a fixed period of time
e.g. 7 days or 14 days, the patent owner will sue in the High Court.
If you are
threatened with a legal action, you should immediately consider the
following:
a)
Is your product covered by the claims of the patent;
b)
Are you aware of any prior art which will render the
patent invalid; if so, are you able to prove that such prior art existed before
the patent;
c)
Is it worthwhile incurring legal fees and expenses
considering the return you can get from selling the products.
Does your product infringe the patent. In order to determine if your product falls
within the claims of the patent, it is necessary to first break down the claim
into its essential features. For the
patent owner to prove infringement, your product must contain each and every
one of the essential features of the claim.
It is wrong
to compare your product against the patent owner's product even if the patent
owner says that its product is manufactured according to the patent. One should always look to the patent document
itself, in particular the claims. Although
the drawings in the patent document may be the same as your product, this is
not conclusive to prove infringement. It
is the language in the claims that should be considered. The drawings may help in the interpretation
of the words in the claims; however, where the words in the claims are limited
in scope and are clear, there may not be any room for the patent owner to refer
to the drawings to argue that the patent covers variations. The reality is that patent specifications are
drafted by humans, and patent attorneys do not have a crystal ball to see every
possible variation in avoiding the patent.
Is the patent valid. In determining if the patent is valid, your
professional adviser will have to conduct a search to see if there is any prior
art (i.e. technical disclosure rendering the invention in the patent not new,
or obvious). The usual sources will be
patent databases and trade publications.
Practical considerations. If the market for a product is lucrative to
you, it is worthwhile to engage a professional adviser to:
a)
determine if your product infringes the claims in the
patent;
b)
conduct a prior art search to determine the chances of
invalidating a patent;
c)
consider re-designing your product to avoid the
patent.
Although a
patent owner's objective is to enjoy a monopoly for its product, he may decide
to share the market with a competitor through a licensing arrangement (subject
to payment of royalty or otherwise).
This may be so if the patent owner perceives that the competitor is
determined to invalidate the patent and that it is just too expensive to carry
on with the litigation and where the outcome is uncertain.
If there is
sufficient prior art to invalidate the patent, you may wish to continue selling
the product and defend the legal action should it arise. Whether or not to defend the claim would
depend on the likelihood of success in the defence, how important the product
is to your business, the market size, the number of players in the market, and
the amount of fees involved. Instead of
taking the patent owner head-on, it may make more commercial sense in some
cases to design around the patent. This
will have to be done with the advice of an experienced patent adviser. Sometimes, it may be better to leave the patent
unchallenged as the patent protects the market for the patent owner, as well as
the trader who is not deterred by the patent because he believes that he has a
good defence. The patent will deter the
less “adventurous” competitors, or those who do not have the benefit of
professional advice.
It is
important to have your professional adviser give you a practical assessment of
all of the above issues should the need arise.
It is hoped that this article will help you ask your patent adviser the
relevant questions.
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