Patent law rewards the inventor of a novel product or process. It is designed to encourage research and development. The patent gives a monopoly on the exploitation of the invention for 20 years.
Each state has its own patent law. There are European Union and Worldwide patent Conventions and Treaties. They are designed to facilitate registration of patents in the European Union and through the countries which are party to the Conventions.
An invention can be patented if it is new, involves an inventive step and is capable of industrial application. This means that it must have a practical commercial use. Patents are commonly granted for machines, equipment, computer hardware pharmaceuticals and medicinal products, manufacturing processes and methods. Drugs and medicines represent one the most commonly patented products.
Certain things are deemed not to be inventions and are not capable of being patented. They include aesthetic creations, discoveries, scientific theories, mathematical methods, the presentation of information, schemes, rules or methods for performing a mental act, playing a game or doing business. Computer programs of themselves are not capable of being patented. Patents are not available in respect of methods of medical treatment or veterinary treatment, surgery or therapy.
Some of the above-listed exclusions may be protected under copyright or other legislation. For example, computer programs are protected by special copyright legislation. Some of the exclusions may form an element of or be incorporated into a patented product or process.
An invention is new if it does not form part of the current state-of-the-art. The state-of-the-art can be available to the public in written, oral or another form. The state-of-the-art is that which already exists in public on the date on which the patent application is filed.
The public covers persons other than the applicant and those related to the applicant. The question of whether an invention is new and involves an invention is looked at from the perspective of a person skilled in the relevant area.
The patent application should be made before the invention is disclosed or publicised because of the requirement that the invention be new or “novel”. The legislation does give some latitude where there has been unauthorized disclosure within six months before the application, in breach of confidence or unlawfully. There is an exemption for certain displays at exhibitions.
The requirement for an inventive step means that the invention must not be obvious to somebody skilled in the relevant area. It is sometimes said the invention must not be obvious to the skilled but unimaginative expert in the area. Generally, the inventive step implies something new.
There is usually an element of improvement or innovation. If something has enjoyed commercial success on the basis of differentiation from a pre-existing alternative, this would be indicative of invention.
A distinction is sometimes made between a discovery and an invention. A discovery is an abstract addition to human knowledge. An invention involves a practical element by way of a new product or process.
If an invention is contrary to public policy or morality, it may not be patented. This is rarely an issue. It may apply to some military products and processes.
Precluded from Patents
Plants and animal varieties and processes for their products other than microbiological processes cannot be patented. Plant varieties may be protected under separate legislation. They must be distinct, uniform and new. There is a 25-year period of protection.
Processes of cloning human beings, modifying germ lines, the genetic identity of human beings, use of human embryos for commercial purposes and modifying the genetic identity of animals which are likely to cause them suffering without essential medical benefits, are not capable of being patented.
Short Term Patents
There is a category of short-term patent which enjoys a lesser degree of protection than a full patent. Ad invention may qualify for a short-term patent if it is new, susceptible to industrial application and does not clearly lack an inventive step. This is a lower standard than that applicable to full patents.
It is not possible to have a short-term and long-term patent for same invention. It is possible to make a dual application and one or other patent may be granted. Short-term patents enjoy less protection. Proceedings for infringement of a short-term patent are brought in the Circuit Court.
There are often long lead-in times for approval of patents and other protections of medicinal veterinary and plant protection products. There is a provision for a supplementary protection certificate which extends the duration of the patent for such products for up to five years. This is intended to compensate for the period involved between the application and the final issue of the relevant patents and licences.
An idea as such is not patentable. However, information, techniques, methods and know-how may constitute valuable intellectual property. Knowhow may be protected by contract where a person agrees not to disclose it.
It may be protected by equitable principles where it would be inequitable to permit a person to take advantage of information received in confidence. It may also be protected by injunction on the basis of being treated as a property right.
In practice, know-how is best protected by being kept secret and being restrained by confidentiality agreements. This contrasts with patents which are published but are protected by statute.
The date of the first application for the patent determines priority.
A patent applicant must submit an official search from the Patents Office. Alternatively, he may furnish evidence of a search or grant of Patent for the same invention in certain prescribed foreign states or under the European Patent Convention or the Patent Co-operation Treaty. There is no requirement to provide a search in relation to a short-term (10 years duration) patent application.
Patent applications are usually made by a Patent Agents or Patent Attorney to the Patents Office which is based in Kilkenny. The application must disclose the field to which it relates and the technical problem which it solves or with which it deals with. The patent claims specify what is protected. The claims should be as wide as possible but not so wide that it fails to comply with the requirement for novelty.
The application must provide specifications. The Patent Rules set out the manner in which the specifications for a patent must be prepared. The invention must be clearly described and disclosed. The description must enable a person skilled in the field to implement it.
An invention may involve several patentable aspects. This may include the physical aspects and processes involved. They may be claimed in a single application if appropriate. An abstract must be prepared.
The process of examination of a patent application can take 18 months to 2 years. When an application is made, particulars are published in the Patent Office Journal. The application is published as soon as practicable after 18 months from the date of filing. The application for a patent may not necessarily have been granted at that stage.
The Patents Office may grant the application on payment of renewal fees.
As an alternative to an Irish patent (and an application in other countries in which protection is sought), a European Patent application can be made to the European Patent Office. The European Patent is deemed to be a patent in each of the designated EU states. The application to the European Patent Office can designate up to over thirty states.
The details of the patent must be translated into the language of the relevant state to enjoy protection in that state. It is possible to abandon the application in respect of some states.
A European Patent designated in Ireland is deemed the same as an Irish patent. It must be translated. If not published in English, it must be translated and filed in the Irish patent office within six months.
There are several international treaties designed to provide for the recognition of patents internationally.
An applicant has 12 months from filing an application to make applications to patent the same invention in other countries. They enjoy the same priority as if made in Ireland and any country which belongs to the Paris Convention or WTO agreement.
There is an international Patent Co-operation Treaty. An application can be made to designate up to 138 states which are party to the Treaty. An internationals search is done. The applications are sent to national patent offices for completion of the procedure. completion of the procedure.
Patents as Property
Patent rights are property rights.It is possible for more persons to own a patent. A register of patents is kept.
The patent owner may assign the benefit of the patent If the patent is invented by an employee, the presumption is that it belongs to the employer.
Patents are capable of being transferred, sold, licensed and mortgaged. Changes in ownership must be recorded in the register. A licence is a consent or permission to exploit a patent. A licence is entered on the register. The Controller must give other parties having an interest, such as a mortgagee.
Generally, licences are granted in return for fees and royalties. A licence may be exclusive unlimited, or limited. It may exclude the holder from exploiting the invention in certain respects.