Patentlaw.ch - Questions and answers regarding patent law (FQA)

FAQ

What is not patentable as an invention? Is software patentable? What is important, if you disclose the invention to a third party? In which countries should an invention be patented? Which costs are to be expected for a patent application? A patent as tactical measure in the war of position? Where are patent specifications published? Duration of the patent protection?

What is not patentable as an invention?

In most countries, ideas, concepts, discoveries, scientific theories, study practices, organizational operational sequences, mathematical methods and aesthetic creations of form are not patentable in particular. Furthermore, patents shall not be granted for new varieties of plants or animal breeds, or for essentially biological processes for producing plants or breeding animals. However, microbiological processes and products obtained by such processes shall be patentable (see Article 1a LPI). Inventions the implementation of which would be contrary to public order or morality and methods of surgical or therapeutic treatment and of diagno-sis applied to the human body or to the bodies of animals are not patentable (see Article 2 LPI or Article 52 para. 4 EPC).

Is software patentable?

Software and computer programs respectively are protected by copyright law. Thereby the copyright protects the implementation and not the abstract process forming the basis of a computer program. It is thus possible to effect the same basic idea in an other computer program, or to reprogram a certain functionality of a software, without infringing the copyright. It would be obvious to try to protect software with patents. Patents protect technical inventions: new and non-obvious solutions of technical problems. By principle, however, computer programs as such may not be patented under European law. A word processor software for example is considered as non-technical and therefore îs excluded from patentability. However, if computer programs are used to implement a technical invention, such a "computer-implemented invention" may be elligible for patent protection in Europe under certain circumstances.(further information on this subject).

What is important if you disclose the invention to a third party?

"Register first, then talk!" This is the most important principle to be followed with inventions. Some inventors had to pay already for the fact that they presented their inventions at fairs in the form of prototypes, printed folders or presented the newest realizations in a lecture, all, before the invention had been filed with the responsible patent office. Such prior publications are prejudicial as to novelty and exclude a patent registration.

In which countries should an invention be patented?

The question about the international extension of the patent protection is a complex subject, which needs to be discussed with a patent attorney. Often the patent owner decides to extend the patent protection at least to the countries of the production and sale of the product.

The decision, in which countries an invention shall be patented, depends on a multiplicity of specific factors. There is no generally accepted proceeding. The most important criteria during an application which can be considered, could be found under the patent application strategy.

Which costs are to be expected for a patent application?

The costs for the drafting of a patent application up to the granting of a patent depends on the decision of the inventor, in which countries he seeks patent protection, on how substantial and time-consuming the drafting of the documentation for the application is, and, whether during the registration procedure the inventor is confronted with opposition and objections respectively or not.

A patent as tactical measure in the war of position?

Patents for inventions may be used for different purposes. Objectives could be the protection of investments or leaving options open (e.g. also for licenses). The inventor and applicant respectively may manage to secure with the patent protec-tion an advantage in competition or even only a market potential in one or several target markets. Patents therefore are directly associated with market positions and longer-term goals. Patents are meed and incentive for the research and development in all fields of technology. Even if an invention is finally granted only in singular countries or if, for other reasons, it is not further pursued to the granting of the patent, each published patent application has the effect that the according invention as from the date of its publication belongs to the prior art and therefore cannot be content of a later patent. Hence, patents and patent applications may be used as important strategic means in the fight for market shares.

Where are patent specifications published?

The publications of the patent specifications are country specific, whereby more and more patent offices publish the patent specifications electronically on the internet instead of providing printed publications (e.g. the United States of America).

Duration of patent protection?

The maximum term of a patent shall be 20 years from the filing date of the application (see Article 14 LPI or Article 63 para. 1 EPC). Before expiration of the term of twenty years a patent can expire by renouncement or because of non-payment of annuity fees. After expiration of the patent, the invention may be used by everyone. For the active ingredients or combinations of active ingredients of medicinal products, the Federal Institute of Intellectual Property may upon request issuesupplementary protection certificates, which may prolong the term of protection up to five further years at most (see Articles 140a et seqq. LPI).

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