Presentation on theme: "Introduction to Patent System Patent ：專利、特許 Monopoly ：專賣、獨占 Letters patent ：專賣權證書."— Presentation transcript:
Introduction to Patent System Patent ：專利、特許 Monopoly ：專賣、獨占 Letters patent ：專賣權證書
Why should we know the patent system? Introduce research workers in the biological sciences to the subject of patents so that they may communicate more readily with those professionally engaged in the law and practice of patents. This communication will most often be with patent agents and attorneys, sometimes with patent counsel, and occasionally with patent office examiners, higher officials of boards of appeal, and judges in patent courts.
Problems between biological scientists and the patent system Research workers prefer to think of themselves as good scientists rather than inventors. Invention and good plain science are not the same thing. Biological inventions are often difficult to fit into the simple framework of nineteenth century physics and chemistry which supports some of our basic concepts of patent law. For some inventors the rules of the game are tedious and inhibitory and are not justified by the results the patent system offers.
Fact The writing of any patent and the creation of a patent situation requires the combined skills of the inventor and the patent draftsman and tactician.
Intellectual property (IP) The law will grant new ideas, designs, processes, products, devices and apparatus a property right and offer the author, designer, or inventor a measure of legal protection against imitation and copying. Like other forms of property it can be bought and sold or licensed to use. It covers patents, designs, trade-marks (industrial property) and copyright (artistic and industrial copyright) The concept of trade secret is outside the statute law of industrial property. Trade secrets usually come under the common law of fiduciary relationships. The rights conferred by industrial properties are not automatic. A registration system is established by statute law in all these fields.
Brief description of patents Patents are rights granted in respect of inventions capable of industrial application. The patent right is a right of exclusion and is divorced from the positive right of making or doing anything. Freedom to use the invention by the patentee may be affected by other laws and other patent rights. It is possible to obtain plant patents in some territories, e.g. USA, but new plant varieties are more often the subject of legal protection granted under plant variety rights which is restricted to the commercial exploitation of the reproductive material of the plant.
Brief description of designs Designs are concerned primarily with features of shape and ornamentation applied to articles. They are of little interest to the biological scientist.
Brief description of trade-mark Trade-mark is a mark used by a manufacturer or trader to distinguish his goods from similar goods of other firms. It is of enormous commercial value once a reputation and public demand for the goods has been established.
Brief description of copyright Copyright arises spontaneously when the work is created. It protects only against actual copying, but not duplication of ideas and efforts.
Justification of the patent system Encourages disclosure as against secrecy Encourages investment in research Encourages investment in production and marketing of new products Provides a framework in which industrial competition is carried on fairly and in accordance with the law Provides a framework in which technology transfer can be regularized between industrial firms
What does a patentee get? The single purpose of a patent is to set up a prohibited area from which competitors are excluded other than by the express consent of the patent owner. Possession of a valid and strong patent gives its owner nothing more than the opportunity to exploit the invention in a privileged manner and to obtain commercial benefits and other positive rewards by his own actions.
Whether patent rights or know-how is more important? It is a fundamental requirement that a patent specification contains a sufficient disclosure, but it is not reasonable to expect it to contain the fullness of teaching which would enable a third party to set up manufacture without the necessity for a substantial amount of development work. When a patentee or a licensee begins operations for the practical industrial exploitation of any invention the know-how element is of prime importance. The possession of patent rights or the right to a license comes into its own at the later stage when competitors and imitators appear on the scene.
What can they do if a research group working for an industrial concern discovers that a particular patent held by a competitive firm presents an obstacle to its own commercial developments? Seek evidence to invalidate the patent Research into ways of avoiding the patent Build up through their own research and patent holdings a position of strength from which to negotiate a license from the competitor
Irritants arose from the inventors Be reticent about the nature of the discovery before steps can be taken to protect the invention / strict imperative against premature publication Do sufficient work on the invention to enable a sufficient content of practical teaching in specification to justify the grant of rights to protect the full breadth of the inventive possibilities / sufficiently full discussion with a competent patent agent Have to endure from the patent office examiner / objections raised based on prior publications / variable attitude to what is justly patentable / commit the time and effort asked to assist the patent agent in coping with official objections
Historical background of patent system: The beginning The first recorded patent is granted in 1421 in Florence to the architect and engineer Filippo Brunelleschi. A three-year monopoly on the manufacture of a barge with hoisting gear used to transport marble. The first patent statute was enacted in Venice in 1474. It rewarded the person who introduced new technology into Venice by giving him a 10-year monopoly over it.
Historical background of patent system: The spreading In England during the reign of Queen Elizabeth I (1558-1603) the crown granted letters patent not only to inventors of new devices, but also to importers of foreign manufacturing techniques and to developers of new industries and colonial possessions. The Congress passed the first U.S. Patent Statute in 1790. France enacted its patent system in 1791.
Historical background of patent system: The prototype The successors to Elizabeth, James I and Charles I, extended the practice by granting monopolies to favorites of the court, particularly those to whom the crown owed political debts. They even granted their friends monopolistic control over many basic necessities of life such as salt and sugar. In 1623, during the reign of James, the English Parliament enacted the Statute of Monopolies. Although it prohibited most royal monopolies, it specially reserved the right to grant letters patent to the true and first inventor of a new manufacture or the first one to introduce a new manufacturing technique into the realm for up to 14 years. This act was the prototype of modern patent statutes.
Historical background of patent system: The North America - 1 In North America the colonies conferred patents on individual inventors of new and useful techniques or devices. The first patent issued on the American continent was granted by the Massachusetts General Court to Samuel Winslow, in 1641, for a novel method of producing salt. The Constitutional Convention held in Philadelphia in 1787. “The Congress shall have power…to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries” (Art. I, Sec. 8)
Historical background of patent system: The North America - 2 The U.S.A.: On Apr. 10, 1790, Congress enacted a patent law that established a board for the granting of patents. ( 美國首部專利法 ) Originally a part of the State Department, the patent office became a distinct bureau within that department with the naming of a superintendent of patents in 1802. New procedures for the granting of patents were enacted by the Patent Act of 1836. ( 修改審查制度， 奠立美國現代化專利制度之基礎 )
Historical background of patent system: The North America - 3 In 1849 the patent office was transferred to the Department of Interior. The patent office was put under the Department of Commerce in 1925. / The patent office was renamed as the Patent & Trademark Office (PTO, 專利商標局 )
有關美國專利申請的基本原則 先發明主義 (granting priority to the party who can prove it was the first actually to invent) ：全球其他國 家都採先申請主義 (grant the patent to the first to file the application) 優先權制度與暫時申請制度 (provisional application) ： 暫時申請為一種國內優先權，可使申請人取得 12 個 月的優先權期間。 專利權期間：在 1994 年以前，是自發證日起算共 17 年。現行則是自發證日起生效，至由申請日起算 20 年後終止。 自 2001 年 3 月中旬起，導入早期公開制度。凡發明 及植物專利申請案在 2000 年 11 月 29 日或之後提出申 請者，自申請日起滿 18 個月將會予以強制公開。
Evidence for establishing priority of invention Accurate invention records of the entire development of inventor’s idea (U.S. patent laws issue a patent to the first inventor): 1. regular (daily) entries in a bound notebook; 2. sketched out and described the first concept (preferably in the inventor’s handwriting) and entered subsequent modifications on succeeding pages; 3. made entries in ink or indelible pencil, no erasures but may crossed out errors, drawn a diagonal line through the unused portion before proceeding to the next page, dated and signed each pages by the inventor; 4. at least one witness, to whom the invention has been explained, should sign each complete entry The case of Alexander Graham Bell and Elisha Gray (inventions of the telephone)
Prosecuting a patent application Patent attorney or patent agent: junior or senior Cost Period of time between the filing date of an application and the issuance of a patent: ranging from 2 to 10 years in U.S. Patent Office
Filing patent application in different countries The International Convention for the Protection of Industrial Property (originally adopted in Paris in 1883): use the first filing date in one member country for applications in other member states The 1970 Patent Cooperation Treaty simplifies the filing of same invention in different countries by providing centralized filing procedures and a standardized application format The European Patent Convention, implemented in 1977, created a European Patent Office that can issue a European patent
Working and licensing of an invention Many patent laws stipulate the patentee must manufacture the invention or license it to someone who will. / In the U.S., there is no requirement to work a patent (unless assigned by the inventor) A patented invention improved an existing and unexpired patent: cross-licensing agreement / The main patentee may be legally compelled to grant licenses to those who hold dependent patents / Companies holding patents may manage to form monopolies that affect entire fields of commerce. Antitrust suits brought by the government may force such companies to license those patents.