Are we moving towards global patenting?

Differences in patent law and practice worldwide affect how patents are obtained and enforced in various territories. This article focuses on the patent offices of three territories that dominate the world patenting arena: the European Patent Office, the US Patent & Trademark Office and the Japan Patent Office. Although some harmonization exists (and more efforts are being made in this direction), there are still differences in certain areas.
Jul 01, 2009
By Pharmaceutical Executive Editors

Patents are an important tool for protecting innovative products, uses or processes intended for commercialization. A granted patent provides a limited monopoly, normally for up to 20 years from the filing date of a patent application, giving a patent owner the right to prevent other parties from making, stocking, selling, using or importing the patented invention without the patent owner's permission. A theoretical ideal for an innovator would be to obtain a patent in all countries of the world. However, patents must be sought and enforced in each territory where protection is desired because a global patent does not (yet) exist. For cost reasons, a decision is usually made as to where to file and process patent applications.

A common patenting strategy is to file an international patent application under the Patent Cooperation Treaty (PCT) within 12 months of filing a first patent application at the applicant's national patent office. Filing an international patent application allows the patent applicant to delay filing separate patent applications in each territory (country or region) where protection will be sought in any of the current 141 PCT states until 30 or 31 months from the priority application filing date. However, differences in patent law and practice worldwide impact not only how patents may be obtained, but also the scope of protection they afford. How then can a single patent application, such as a PCT application, be used successfully to obtain a valid patent in different territories? I'll return to this question after reviewing certain aspects of the patenting process.

The three patent offices that dominate the world patenting arena are: the European Patent Office (EPO), the US Patent & Trademark Office (USPTO) and the Japan Patent Office (JPO). Although there are similarities in the patent laws of these territories, there are also important differences. The following are summaries of the differences; these are not intended to provide a complete account of the patenting processes or differences.

European Patent Office

The EPO is responsible for examining and granting European patents that can then be effected in any designated European Patent Convention (EPC) contracting state (numbering 35 at present).

The EPO operates a firsttofile system, which means that the first person to file a patent application for a particular invention will have preferential entitlement to obtain patent rights in the invention over another person who subsequently files an application for the same invention. The firsttofile system is intended to create objective legal certainty as to entitlement where copending applications are directed to the same invention.

The EPO has limitations on what it regards as an invention; for example, discoveries, scientific theories, mathematical methods and aesthetic creations are not deemed inventions. Furthermore, certain innovations, even if they are inventions, are excluded from patentability.

Examples of unpatentable inventions are methods for treatment of the human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body. The latter provisions do not apply to products, in particular substances or compositions, such as pharmaceutical drugs, for use in any of these methods.

When assessing novelty and inventive step — two essential criteria for patentability of an invention — the EPO can take into account anything that has already been made available to the public by any means, including a written or oral description or by use, before the filing date of the patent application. This requirement for 'absolute' novelty means there is no territorial or language limitation on what may constitute a publicly available description. Therefore, an innovator who wishes to obtain a valid European patent should not publicly disclose the invention before filing the patent application.

The EPO uses a problem and solution approach in determining whether a notional skilled person in the relevant field would require an inventive step to conceive of the differences between the invention and the closest prior disclosure, when faced with the problem addressed by the invention.

As with most patent offices, the EPO will determine the subject matter for which patent protection is sought in an application by examining the claim or claims, and using the description and drawings for interpretation. In practice, the EPO typically grants relatively broad claims if the claim scope is considered to be commensurate with the contribution to the technical field of the invention.

On a practical level, a noteworthy aspect relating to EPO examination practice is that an application undergoing examination must contain only one independent claim per claim category (product, process, apparatus or use), with a few exceptions allowed.

After the granting of a patent by the EPO, the patent becomes a bundle of separate national patents, each of which must be processed and, in some cases, translated to allow the patent to become effective in the designated EPC states. However, a European patent may be attacked centrally at the EPO by a third party who files an opposition within 9 months of the date of granting. Although a final decision regarding the validity of a European patent following an opposition may take many years, it will render the patent void in all the EPC states where it was effected if it is revoked.

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