The subject matter of patents is, in general, with the exception of a wider range of patentable subject matters in the US, directed to technical solutions in the form of devices, apparatuses, products, substances and technical methods. In the following, some basic principles of patents are discussed.

Since patents protect technical solutions, one precondition for a patent is that an invention has been made. Inventions can be made only by persons, not by legal entities. Consequently, the right to a patent always belongs to the inventor.

However, inventors can transfer the patent to anybody else, for example, their employers. The transfer of the patent can be executed in different ways, for example, by a contract or according to specific legal provisions, as for example in Germany under the law relating to inventions of employees. Accordingly, it is important to determine who is entitled to file the application, since applications made by persons not having the right to the patent may be invalid.

Exclusive Privilege

After granting or registration of the patent, the patent confers on its proprietor the exclusive right to produce, offer or use the product or method protected. However, this exclusive privilege is mainly the right to prevent others from doing something, not permission for the patent proprietor for any operation. If the use of a patent infringes rights of third parties or violates the law, the patent does not create a certificate of exemption.

Principle Of Territoriality

The exclusive privilege given by a patent is always restricted to its geographical limits. Patents can be granted only with respect to a specific territory, e.g., a state. However, some states constitute a union for filing and granting of patents based on one application for several member states, e.g., the European Patent Organization.

Period Of Protection

Patents are also limited in their duration. The exclusive right of the patent is the gratification or remuneration for the patentee or the inventor for disclosing the invention and making it available for the public. However, after a predetermined period of time during which the patentee can solely preserve the yield of his invention, the public should benefit from the invention. Consequently, patents generally have a maximum period of protection of 20 years from the day of filing.

Ways Of Establishing Patents

Different ways of establishing industrial rights or protective rights exist.

First, one can distinguish between rights by fact and formal rights. Rights by fact are automatically generated by means of facts, e.g., by creating artificial works in the case of copyright. Formal rights are generated by formal application and registration through authorities. This group of rights comprises patents or utility patents, utility models, trademarks, and design patents.

Accordingly, patent protection cannot be obtained by simply creating something. It is also necessary to file an application. However, the further proceeding of the filing differs from country to country. Some countries do not require that the patent be examined with respect to the substantive law. Such patents are also called registered rights, since they are substantively unexamined. Contrary to that practice, in most countries, patents must pass through substantive examination. During the substantive examination, it is verified that the subject matter for which protection is sought fulfills the requirements with respect to the substantive law, i.e., novelty and inventive step, as discussed below. The advantage of examined patents is the higher degree of legal certainty. In case of substantively unexamined and merely registered protective rights or patents, the validity must be examined in case of an infringement.

For this reason, it is recommended when facing a patent to first verify that the patent was substantively examined. For example, petty patents or utility models (“Gebrauchsmuster”) in Germany are unexamined protective rights that are only registered after filing of the application. However, proprietors of the utility model are allowed to claim omission of using the subject matter of the utility model because they possess the registered utility model. But this does not provide information on the legal validity of the utility model, which must be examined in the case of an infringement.

Priority

Since it is conceivable that different persons could make the same invention without knowledge of each other, there must be a way to decide who has the right to the patent. Two solutions have been developed: the principles first-to-file and first-to-invent.

According to the first-to-invent principle, the inventor who made the invention first has the right to the patent. This principle is used in US patent law. Because of the difficulty of proving the point of time of the invention, this can lead to very time-consuming proceedings. The first-to-file principle avoids such problems by giving the patent to the person who filed the application first. This principle applies to the patent law in most countries.

Accordingly, an early filing date for an invention is important. Although the time of filing a patent application is not as important with respect to allocation of the patent in the US, the filing date is nevertheless important with respect to the defense function of a US patent, since the US patent application forms prior art with respect to subsequent applications of third parties.

According to the first-to-file doctrine, the date of filing determines who has the better rights. For this reason, it would be important for an inventor or applicant to file the patent application all over the world (principle of territoriality) as soon as possible. Since this would cause enormous difficulties for the applicant, some countries made an agreement as early as the late 1800s with respect to industrial property rights and established the Paris Convention. One of the rules of this convention refers to the priority of inventions and that an applicant can claim the priority of a former application in a member state of the Paris Convention if the subsequent application in a foreign country is filed within 12 months. Thus, the time of filing a first application in a member state of the Paris Convention is of great importance, not only for patent protection in this country, but also for further applications, almost worldwide.

Novelty

As a common principle for patents, it is a precondition that the subject matter for which protection is sought is novel with respect to prior art. Novelty means that the same invention or the subject matter of the invention is not known to the public. The filing date or the priority date of the first application is used as time reference. Accordingly, the novelty test, which must be carried out during substantive examination, is carried out by comparing the claimed invention to the subject matter disclosed before the priority date of the patent application. All subject matters known or disclosed before the priority date of the patent application are called prior art.

Inventive Step/Nonobviousness

The invention must also be based on an inventive step. In other words, it should not be obvious for a person skilled in the art. The requirement of an inventive step or nonobviousness postulates that a certain inventive effort should be necessary to merit remuneration of a patent or exclusive right.

In order to assess the inventive step, it must be determined whether a person skilled in the art would have been able to find the technical solution of the claimed invention without being inventive. For this purpose, the claimed invention must be investigated in the light of prior art. If a person skilled in the art were able to easily find the claimed solution when considering the known prior art or suggested combinations thereof, the patentee or inventor should not be awarded a patent.

The person skilled in the art, who is taken as a reference for assessing the inventive step, is not a real person, but a fictive figure having average knowledge in the specific area of technology of the invention. This hypothetical skilled person is assumed to have theoretical knowledge of every prior art document or disclosure, but not to have very high other abilities.

Industrial Application

Only those inventions that are industrially applicable should be regarded as patentable matter. However, this can be construed as given in most cases. Only specific exemptions of patentability, such as methods for treatment of the human or animal body by surgery or therapy and diagnostic methods, are deemed to be not acceptable for industrial application according to the European Patent Convention, for example. Generally, the requirement of industrial applicability does not constitute a high barrier to obtaining patent protection.

Read more about this topic in Ullmann’s

This article is an excerpt from the Ullmann’s Encyclopedia of Industrial Chemistry (wileyonlinelibrary.com/ref/ullmanns), which celebrated its 100^th anniversary in 2014. More about the topic can be found in the encyclopedia article on Patents. More concept articles on general interest topics in industrial chemistry and chemical engineering can be found on the Ullmann’s Academy homepage.