What can be patented, and why is it necessary to do?
Intellectual property

What can be patented, and why is it necessary to do?

Creative and intellectual work in the form of new inventions can be protected by a patent. So, why is patenting attractive? Generally speaking, a patent protects an invention from copying illegal use and provides the owner with a kind of “monopoly.”

What is protected by a patent?

A patent can be obtained for various types of inventions: devices, technologies, substances, in some cases, for computer programs. To get a patent, an invention must meet specific criteria, including:

  1. “NOVELTY” – the absence of similar inventions in the world. They can consider both patent databases and open sources (books, articles, websites).
  2. “INVENTIVE LEVEL” – the difference between an invention and other existing ones.
  3. “INDUSTRIAL PRACTICE” – the possibility of using the invention in specific areas: medicine, agriculture, information technology, etc.

How to get a patent? I recommend starting with a patent search for similar and identical patents. This will help understand whether it is possible to obtain a patent for such an invention. If you have not found such inventions, you can apply for a patent. As a rule, a specialist in intellectual property, together with the inventor, helps draw up an application to avoid missing essential nuances.

Territorial principle. The effect of a patent extends to the territory of its registration. The rights that a patent gives you may not be recognized in all countries and associations but only in the territory defined by the patent itself.

It is not necessary to apply to all countries immediately. For example, after applying to Ukraine, the applicant will have 12 months to apply for the territories of interest.

Suppose you wish to obtain a patent in other countries. In that case, the applicant can apply under the international PCT system, which provides an additional 18 months to determine the countries/territories for filing applications with specific national/regional patent offices.

What rights does the patent owner get?

  • freely use the invention
  • to allow other persons to use the invention – to issue licenses
  • receive royalties
  • sell his intellectual rights to the invention
  • prohibit third parties from using the invention
  • demand in a compulsory (judicial) order: termination of the use of the invention and compensation for losses.

What is the duration of a patent? Patents are limited in terms of their validity period. For example, in Ukraine, the European Union, the Russian Federation, and other countries, the duration of patents for inventions cannot exceed 20 years.

To maintain a patent in force, the owner must pay annual fees. If fees are not paid on time, the patent will be invalid.

Protection from “patent trolls”

For inventors, the best solution would be not to disclose their developments, not to place them in the public domain, and to patent them before applying. This will help not to have restrictions and obstacles in the use of inventions in the future. After all, “know-how” can be appropriated as an unscrupulous counterparty, an employee, as well as a patent troll for the purpose of extortion.

If there are grounds, the patent can be canceled with the court’s help. But, as a rule, this is a lengthy process that requires considerable costs and forensic examinations.

Customs register as a means of protecting patent rights

The patent owner has the right to enter the patent in the customs register. This contributes to the detection of goods that infringe patent rights when transported across the border of Ukraine and/or other countries.

Upon detection of such goods, customs will be able to:

– temporarily suspend the import/export of goods across the border;

– destroy goods, the import/export (import/export) of which has been suspended by a court decision or other authorized body.

It is important to consider that with such a “stop” of goods at the border, the patent owner will need to promptly apply to the court and obtain a final injunction on the transportation of goods across the border.

If there are no patent infringements or the parties have settled the situation out of court, the right holder may allow the customs clearance of goods.

Can computer software be patented?

It has become possible to patent computer programs and related IT solutions relatively recently and with several restrictions. For patent protection, the following nuances must be taken into account:

  • a technical result is requested
  • patent protection cannot be granted to a software product solely because its use is made by means of a computer or other device
  • the protection may be granted to an “abstract idea” (calculus methods, algorithms, etc.) only if they contain an inventive step.

For many countries, it is necessary to associate a software product with a specific device (hardware). But there are exceptions, as in the United States, where software products “as is” can be patented.

In each case, we recommend analyzing the object of patenting and its constituent elements. In addition to patent protection, IT solutions can be protected by copyright (code, visual part, animations, designs, and other details).

How did patents help win in court?

Copying patented technologies is a basis for dispute. The nature, circumstances, and requirements in such disputes are different. Therefore, we will consider several well-known litigations in Ukraine and abroad.

For example, a dispute in the pharmaceutical market – Megainpharm GmbH vs. Darnitsa (Case No. 910/13320/13). Megainpharm GmbH achieved a ban on the use of the drug “Oftamirin” from “Darnitsa” and its withdrawal from commercial circulation, as it copied the patented claims (“Eye antiseptic”). In this category of cases, the key is always an expert opinion, which confirms copying.

From international practice, let’s pay attention to the following cases:

     1. Google vs. Oracle.

Google was accused of copying the Java programming language code and infringing patents. The bottom line is that when creating the Android operating system, an analog of Java was created. Oracle demanded $ 9 billion in compensation from Google. The dispute, in this case, is still ongoing. The result depends on whether the court recognizes that the Java language is provided as a product that falls under the category of “fair use” – the principle that particular patented inventions can be freely used.

Thus, if the invention is used illegally (without permission), you can demand a ban on the use and monetary compensation (for each case, the calculation of its amount is individual).

     2. Nokia vs Mercedes-Benz (Daimler AG).

The dispute between these companies is using Nokia navigation technologies in Mercedes-Benz vehicles from Daimler AG without a permit/license.

– Daimler AG’s position: obtaining a license from Nokia with fixed payments.

– Nokia’s position: granting a license under which payments are calculated as a percentage of each car sold.

The court recognized the illegality of the use of Nokia’s developments, noting that they can be used in cars only based on licenses. In this regard, there was a risk of a ban on the sale of certain models of Mercedes cars, but both sides still managed to agree. Nokia achieved the goal and protected its patent rights.

Conclusion

If a business creates, sells, or uses new products, then it is worth considering the possibility of protecting intellectual property rights. This can be helped by patents issued for devices, technologies, computer programs, and other objects.

With the receipt of a patent, the owner receives a “monopoly” on the use of his product in any legal way and the ability to protect patent rights from encroachment by third parties.

In addition to patents for inventions, do not forget about other components of products worth protecting. For example, the name – as a trademark, appearance – an industrial design, and copyright will help protect code, design, video, animation.

The material is prepared for MC.today

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The author of the material is

Sergiy Barbashin – IT attorney, managing partner at Trustme Law Firm, Intellectual Property Expert