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a. What is an invention?

The majority of laws, the European Patent Convention as well as the American Patent Law or adherent national laws such as the Belgian Law upon patents of invention, do not provide a definition of an invention.

These laws define only indispensable criteria required for all inventions in order to form the object of a valid patent protection.

In particular, an invention has to meet a series of criteria of patentability, such as novelty, inventive step and industrial applicability in order to obtain protection by Patent Law.

b. What is considered to be a patent?

A patent is a transferable and territorial title of ownership. This title consists of an exclusive and temporary right to exploitation of said invention for the territory concerned.

This means that all patents constitute a negative right, prohibiting third parties the exploitation of said invention in the concerned territory, as long as the corresponding right stands.

"Exploitation" is related to the production, sale or use of the object protected by patent rights.

A patent will be granted on the basis of a text drafted according to precise formal rules which are common to the majority of the industrialised countries.

This draft will consist of:

• a descriptive part on the invention providing details;
• claims that determine the scope in stating the basic technical features of the invention
• possibly one or more figures, and
• an abstract.

It is advisable that such a text should be drafted by Office Van Malderen. Therefore, a detailed description of the invention is required.

If the invention meets the formal and basic criteria, a certificate denominated "patent of invention" shall be granted to the inventor or its assignee.

c. What can be protected by a patent?

In order to protect an innovation by means of a patent application, it should have a technical effect..

As a result, some innovations are by law regarded to be unpatentable.

More particularly, discoveries, scientific theories or mathematical methods are unpatentable. An idea is equally unpatentable but the technical realisation of an idea may be protectable by the filing of a patent application.

Aesthetic creations, plans, principles and methods for performing mental acts or intellectual activity, for example games or economic activities, cannot be protected by a patent.

However, a computer program or software characterised by a technical effect, can be protected by a patent right, in the United States as well as in Europe.

The invention protected by a patent right may be related to:

• a product,
• a process (possibly the production process of said product),
• an apparatus or device,
• use of said product, said process or said apparatus or device.

It is equally important to note that several of the above-mentioned innovations can, however, be protected by other intellectual property rights (copyrights, rights of designs and models, trademarks, etc.).

d. What criteria should be fulfilled in order to obtain the granted patent?

Criteria of patentability are similar all over the world and they basically consist of novelty, inventive step and industrial applicability.

Novelty

To be able to protect a technological innovation by means of a valid patent, it should be new; in other words, it should not be disclosed to the public, not even by the Inventor.

"Disclosure" is understood to be an oral or written disclosure. To protect yourself against untimely disclosure, it is useful to have a secrecy agreement signed by third parties with whom you might get into contact.

This rigid criterion of novelty exists in most countries. However, in the United States, American law provides a grace period for the Inventor of 1 year maximum in order to let the inventor protect his technological invention by means of filing a patent application. This one-year-time limit starts from the day upon which said invention was made public.

Inventive step

This is a more subjective criterion than novelty. "Inventive step", is best illustrated by referring to the fact that a person skilled in the art is not able to derive a straightforward solution on the basis of the overall state of the art. Therefore, the invention should not be considered as obvious for the person skilled in the art.

Furthermore, advantages resulting from the invention should not be obvious, in other words, they are unexpected to a person skilled in the art.

Industrial applicability

In order to satisfy this requirement, the invention should aim for at least one industrial application of the invention.

This criterion should especially be taken into account for inventions in the field of biotechnology or inventions related to biological products (cells, nucleotide sequences, proteins, etc.), wherein the main characteristics should represent at least one technical function susceptible of industrial application.

To these criteria of patentability should be added sufficiency of description and unity of invention.

Sufficiency of description

With "sufficiency of description", it is understood that the invention should be stated in a sufficiently clear and complete manner, so that a person skilled in the art may reproduce the invention.

"Description" is understood to be the general content of a patent application (specification, claims and figures).

This criterion is particularly important for inventions related to the field of biotechnology. Often one envisages the filing of biological materials (viruses, bacteria, animal cells, nucleotide sequences, etc.) before filing a patent application.

Unity of invention

"Unity of invention" means that a patent title can only be granted to one or more inventions related to one another, namely to several sets of claims, if these claims constitute one single inventive concept.

In Europe, a unique patent can be delivered for a new and inventive product as well as for its production process, possibly for a device or an apparatus aimed for its production and for certain specific applications of said product.

Similarly, in the field of biotechnology, different categories of products (nucleotide sequences, proteins encoded by said nucleotide sequences, antibodies directed against said proteins, cells expressing said nucleotide sequences, etc.) may constitute one single invention and are susceptible of simultaneous protection in one single patent.

e. How to protect an invention?

An invention can be protected by filing a patent application. From the date of filing of the patent application onwards, certain countries or regions allow already protection of said invention.

Usually, filing proceedures, the examination and the grant of a patent are effected in each country individually. However, there exist, proceedures allowing a single examination of the application and in certain cases the grant of a single certificate for several countries.

Examples:
The European patent is a certificate granted after filing a European patent application which may designate at present 20 countries and which can be transformed into a bundle of national patents after grant of the European patent.

The community patent, not yet in force, allows the grant of a single title valid in all countries pertaining to the European Union, in case an overall examination has been performed.

The OAPI and ARIPO patents allow the grant of a single title for a large number of African countries pertaining to the French and Anglo-Saxon culture respectively.

The Eurasian patent is a certificate granted after filing a patent application susceptible of designating a certain number of countries pertaining to the ex-USSR and which, at its date of grant, will be transformed into a bundle of national patents.

Finally, the international PCT patent application (Patent Cooperation Treaty) may lead to a provisional protection of a certain number of countries (presently more than 100) by filing a single patent application allowing a documentary search and an examination proceedure in a more centralised manner.

f. A preliminary documentary search: useful or not?

It is extremely useful to carry out a documentary search among the patent literature and possibly the scientific literature before filing a European patent application and in order to avoid further "re-inventing the wheel". This documentary search allows the inventor to understand which track is followed by his competitors and may help to determine whether certain technological developments are susceptible of being protected by a patent application or by other means.

g. What is the best filing strategy?

World-wide, almost all countries recognise (following the Paris Union Convention) the priority right of one year for an invention. From a practical point of view, this means that when a first filing is performed in any country adherent to the aforesaid Convention, the filing date is recognised as the date upon which the invention comes into effect with respect to all other countries of the Convention, if within a delay of one year (priority year), the applicant or the holder of his rights has performed the necessary formalities to protect said invention in all countries of the Convention where he wants to obtain a protection.

Filing proceedures aiming at the protection of an invention during the priority year should be envisaged according to the language wherein the first patent application (entitled priority application) has been drafted.

Even though the formalities (national filing, European filing, PCT filing, etc.) seem relatively complex and diverse, the total costs for the proceedure (during 5 years) up to the grant of a European patent may amount to approximately EUR 25 000,- whereas the charges for the grant of an American patent are minimum EUR 10 000,-.

h. Who is allowed to file a patent application?

National laws define who is allowed to file a patent.

Certain countries consider the holder of a patent application as the undeniable inventor, whereas other countries consider that the applicant who is not necessarily the inventor may possess patent rights. This applicant may be be an individual or a legal entity and may generate these rights on the basis of a contract of employment, a contract between parties, a co-propriety contract, etc.

In every way, it is indispensable that the inventor(s) is (are) correctly identified.

Any false designation of the Inventor may involve a loss of rights to the invention.

The first and true inventor is (are) the person(s) who thought of the innovation (idea of innovative technology) and who made it (tests of application, realisation of prototypes).

In Europe, however, the patent is granted in the name of the first applicant and not in the name of the first inventor, as is presently the case in the United States (according to the principle "First to File", valid in Europe and "First to invent" valid in the United States).

i. What is the duration of the patent protection?

A patent protection takes generally 20 years, from its filing date onwards, and provided that renewal fees (annual fees for maintaining the patent into force) are paid regularly, in general each year on the filing date.

However, these rules may be slightly different for certain countries. More specifically, the duration of protection may differ from 20 years.

For medicaments and phytosanitary products, an extension of the term for patent protection can be obtained.

j. Is the working of a granted patent obligatory?

A patent being defined as an exclusive and temporary right of patent exploitation, often implies the obligatory exploitation of said invention.

Indeed, legislation sometimes provides the grant of obligatory licences in case the patent remains unexploited. Under other laws it suffices to take care of formalities concerning the invention's implementation, in other words, it suffices to have licence offers published.

This situation should be examined for each country individually.

k. How to defend one’s patent?

The patent provides its holder with rights to oppose to the exploitation by all third parties of a protected invention on the territory protected by the patent, via an infringement action, possibly related to an unfair competition action.

The burden of proof lies with the patent holder who may establish this proof by all judicial means. In Belgium, for instance, the holder has a particularly effective means of proof, namely: the discovery proceedure ("Anton Pillar Order") proceedure. Article 1481 of the Judicial Code provides indeed the possibility to patent holders and their entitled parties to install, with the judge's authorisation obtained upon request, a proceedure with the assistance of one or more experts designated by said judge, to describe the apparatus, works, and all objects and processes considered to be counterfeited, as well as all plans, documents, calculations or notes, by means of which infringement is ascertained, and the implements having served immediately to the incriminating production. In certain cases, the counterfeited products and all implements of production may even be seized.

The first aim of such a proceedure is thus to allow the preliminary assessment of incriminating facts of infringement by means of a seizure-description catching the so-called infringer in the act.

This proceedure turns out to be very efficient provided that the so-called infringer is caught in the act. Thus it is not always advisable to the patent holder who suspects infringement, to give cease and desist to the presumed infringer in case this infringer may have the possibility to have the proof of infringement disappeared.

On the contrary, as this proceedure may prove to be very prejudicial / harmful; the judge may provide the obligation to give a warning in the name of the patent holder so as to avoid misuse. It should indeed be avoided that the competitor becomes informed about his competitor's secrets of production under the pretext of an discovery proceedure proceedure.

The expert(s) designated by the judge will be held to draw a report concerning the seizure-infringement proceedure. In the month during which the report has been forwarded, the patent holder is forced to institute a lawsuit; failure to do so leads to the report's nullification.

Besides penal sanctions, civil sanctions of infringement are numerous and may consist of the infringement proceedure being ceased, but may consist also of a penalty, confiscation, publication of a judicial decision and damages as well as interests.

Together with an action of infringement, a proceeding in cessation for unfair and parasitic competition may be installed in order to obtain cessation of acts derived from parasitic competition and similarly, the withdrawal of unlawfully copied material on the market.

l. How to protect oneself against thirds before the date of filing?

Secrecy agreements

Before any contract or collaboration is made with partners susceptible of analysing or exploiting the invention, it is recommended to have secrecy agreements signed by its partners.

In case of lack of such agreements, the possibility to disclose the invention, even orally, may form a bar to the invention's patentability, since the invention will no longer be recognised as being new or inventive.

Provisional filing in the United States

From June 1995 onwards, the American Patent Office has installed a provisional filing proceedure of a patent application. This proceedure allows the filing with the American administration of a text (comprising possibly one or more figures) describing an invention.

The text to be filed may be presented under whatever format and in whatever language. The text may be, for example, the text prepared for publication in a scientific magazine or for oral communication at a conference.

Such a fast filing proceedure is less expensive than a filing proceedure of a regular patent application and requires the payment of filing fees and the identification by name and private address of at least one of the inventors.

Additionally, such a filing opens a priority right of one year following the Convention of the Paris Union, and this date may thus be claimed whenever regular filings are made within one year from the provisional filing date in the United States or in any country pertaining to the Convention of Paris Union.

Said proceedure may be recommended in case it is impossible to prevent imminent disclosure of an invention by the inventors or by third parties and when it is materially impossible to undertake the draft and filing of a regular patent application for an invention.

Keeping laboratory notebooks

Contrary to other countries, the United States law provides for an invention to be attributed to the first inventor and not to the first applicant (principle of "First to Invent"). This criterion is applied to all inventions conceived and performed in a country member of the World Trade Organisation (W.T.O.).

Thus it is absolutely necessary that the inventor has the possibility to prove through all means this date of conception and realisation, either before the American administration, either before an American court of justice.

In societies and research centres, such proof is generally provided by transmitting copied laboratory notebooks. It is therefore important that these notebooks are held following criteria generally accepted by the American administration.

Consequently, it is advisable that at least the following criteria are taken into account:

• laboratory notebooks should be paper bound, mentioning page numbers without interruption of numbering;
• it is to be preferred that laboratory notebooks have an index, as well as a page mentioning the identity of the person working with the experienced annotated data;
• it is equally important that this document was read, dated and signed by a witness able to understand its content and who is not a co-inventor.