National Systems of Utility Models Protection - the European Experience
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"Enlarged" Concept of Novelty: Initial Study
December 2, 2004 DRAFT “ENLARGED ” CONCEPT OF NOVELTY : INITIAL STUDY CON CERNING NOVELTY AND THE PRIOR ART EF FECT OF CERTAIN APPL ICATIONS UNDER DRAFT ARTICLE 8(2) OF THE SPLT prepared by the International Bureau I. SUMMARY 1. The present initial study is submitted upon request of the Standing Committee on the Law of Patents (SCP) at its tenth session, held in Geneva from May 10 to 14, 2004, in order to provide a basis for discussion concerning a possible new novelty concept applicable to th e prior art effect of unpublished earlier applications under Article 8(2) of the draft Substantive Patent Law Treaty (SPLT). The study aims at providing broad background information and at facilitating further substantive discussion in the SCP, and thus addresses not only national and regional laws and practices regarding the prior art effect of earlier applications, but also the policy objectives underlying these different practices. 2. The divergences among national laws and practices in resp ect of the prior art effect of unpublished earlier applications seem to reflect different principles and objectives underlying the prevention of double patenting. Examining a number of national and regional laws and practices, it appears that those differ ent practices correspond mainly to one or more of the following three models: (i) Strict novelty: if a claimed invention is explicitly or inherently disclosed in an earlier application, the earlier application defeats the patentability of the claimed in vention; (ii) Broader novelty: even if the claimed invention is not fully disclosed (explicitly or inherently) in the earlier application, the earlier application defeats the patentability of the claimed invention if the differences between the two are minor (for example, a replacement with a well -known equivalent element); (iii) Novelty and inventive step (non-obviousness): the earlier application defeats the patentability of the claimed invention if the latter lacks either novelty or inventive step (non-obviousness) compared to the earlier application. -
Public Health and Intellectual Property Management: the Challenges on Access to Medicines
Public Health and Intellectual Property management: the challenges on access to medicines Dr. Inthira Yamabhai 1 | Public health, innovation and intellectual property Overview Intellectual property (IP) and implications on access to medicine – Trade Related Aspect of Intellectual Property Rights (TRIPS) – TRIPS+ through trade agreements Sources of information 2 | Different forms of IP Trademark: name under which product is marketed Patent: compound, crystalline forms, process, method of use, etc Protection of undisclosed data: clinical test data Copyright: package insert Design protection: packaging 3 | Patents There is nothing such as a worldwide patent! WIPO Patent Cooperation Treaty allows for worldwide filing, but applicant receives a bundle of national patents; same principle under European Patent Convention WTO TRIPS sets certain minimum standards: – Term: 20 years from filing data – Mandatory for all fields of technology – Criteria: novelty, inventive step, industrial applicability – Flexibilities: e.g. parallel importation and compulsory licensing 4 | One drug = one patent??? "…a key element of life cycle management strategies is to extent patent protection for as long as possible by filing secondary patents to keep generics off the market" (Burdon and Sloper 2003) Sofosbuvir: Expiry without patent term extension(s) • Broad compound patent (Markush) Market 2024 • WO2005003147A2 Authorization US: 2013/14 • Compound patent on prodrug • WO2008121634A2 2028 www.who.int/phi/impl ementation/ip_trade/ip • Crystalline forms _patent_landscapes/e -
Confusing Patent Eligibility
CONFUSING PATENT ELIGIBILITY DAVID 0. TAYLOR* INTRODUCTION ................................................. 158 I. CODIFYING PATENT ELIGIBILITY ....................... 164 A. The FirstPatent Statute ........................... 164 B. The Patent Statute Between 1793 and 1952................... 166 C. The Modern Patent Statute ................ ..... 170 D. Lessons About Eligibility Law ................... 174 II. UNRAVELING PATENT ELIGIBILITY. ........ ............. 178 A. Mayo Collaborative Servs. v. Prometheus Labs............ 178 B. Alice Corp. v. CLS Bank Int'l .......... .......... 184 III. UNDERLYING CONFUSION ........................... 186 A. The Requirements of Patentability.................................. 186 B. Claim Breadth............................ 188 1. The Supreme Court's Underlying Concerns............ 189 2. Existing Statutory Requirements Address the Concerns with Claim Breadth .............. 191 3. The Supreme Court Wrongly Rejected Use of Existing Statutory Requirements to Address Claim Breadth ..................................... 197 4. Even if § 101 Was Needed to Exclude Patenting of Natural Laws and Phenomena, A Simple Statutory Interpretation Would Do So .................... 212 C. Claim Abstractness ........................... 221 1. Problems with the Supreme Court's Test................221 2. Existing Statutory Requirements Address Abstractness, Yet the Supreme Court Has Not Even Addressed Them.............................. 223 IV. LACK OF ADMINISTRABILITY ....................... ....... 227 A. Whether a -
Demythologizing PHOSITA
Osgoode Hall Law Journal Article 3 Volume 47, Number 4 (Winter 2009) Demythologizing PHOSITA - Applying the Non- Obviousness Requirement under Canadian Patent Law to Keep Knowledge in the Public Domain and Foster Innovation Matthew eH rder Follow this and additional works at: http://digitalcommons.osgoode.yorku.ca/ohlj Part of the Intellectual Property Law Commons Article Citation Information Herder, Matthew. "Demythologizing PHOSITA - Applying the Non-Obviousness Requirement under Canadian Patent Law to Keep Knowledge in the Public Domain and Foster Innovation." Osgoode Hall Law Journal 47.4 (2009) : 695-750. http://digitalcommons.osgoode.yorku.ca/ohlj/vol47/iss4/3 This Article is brought to you for free and open access by the Journals at Osgoode Digital Commons. It has been accepted for inclusion in Osgoode Hall Law Journal by an authorized editor of Osgoode Digital Commons. Demythologizing PHOSITA - Applying the Non-Obviousness Requirement under Canadian Patent Law to Keep Knowledge in the Public Domain and Foster Innovation Abstract The uS preme Court of Canada recently revised the doctrine of non-obviousness in a pharmaceutical "selection patent" case, Apotex Inc. v. Sanofi-Synthelabo Canada Inc. Although the Court was cognizant of changes to the same doctrine in the United States and the United Kingdom, a critical flaw in how the doctrine is being applied in Canada escaped its attention. Using content analysis methodology, this article shows that Canadian courts frequently fail to characterize the "person having ordinary skill in the art" (PHOSITA) for the purpose of the obviousness inquiry. The ra ticle argues that this surprisingly common analytical mistake betrays a deep misunderstanding of innovation--one which assumes that actors consult patents to learn about scientific developments, devalues the importance of the public domain, and ignores the industry--specific nature of innovation. -
Foreign Filing After US Patent Application
Invention-Con 2017 - International 2 Protection - Patents International Protection: Patents Presented By: Robin Hylton Session on International Protection: Patents • Patent Protection Outside the United States • Paris Convention Basics • Patent Cooperation Treaty Basics • Global Dossier at the USPTO Invention-Con 2017 - International 4 Protection - Patents Patent Protection Outside the United States Invention-Con 2017 - International 5 Protection - Patents Foreign Patent Protection • Patent protection can be an important part of overall business strategy in today’s global marketplace • In general, patent rights are territorial in nature • Protect against infringing activities occurring within the country or region in which the patent was granted • To obtain patent rights in foreign countries, U.S. applicants must apply for a patent in each country or region of interest • A world-wide patent does not exist Invention-Con 2017 - International 6 Protection - Patents Business Considerations in Filing Foreign Patent Applications • Business considerations • Exclusive rights • Return on investment • Opportunity to license or sell the invention • Increase in negotiating power • Positive image for business • Patent procurement and maintenance costs • In 2002, GAO estimated costs of between $160,000 to $330,000 for obtaining and maintaining patents in 9 countries • France, Germany, Italy, Ireland, Sweden, United Kingdom, • Canada, Japan, & South Korea Invention-Con 2017 - International 7 Protection - Patents Legal Considerations in Filing Foreign Patent Applications • Patent law considerations • Standards of patentability in country/region • Patentable subject matter differences • Prior art differences • Grace periods • Geographical restrictions • First-to-file • Utility model protection • Patent enforcement laws • Does the country/region have effective laws and procedures for enforcing the patent? Invention-Con 2017 - International 8 Protection - Patents Who Grants Patents? • National patent offices • E.g., USPTO, JPO, KIPO, etc. -
Guidelines for Examination in the European Patent Office
GUIDELINES FOR EXAMINATION IN THE EUROPEAN PATENT OFFICE Published by the European Patent Office Published by the European Patent Office Directorate Patent Law 5.2.1 D-80298 Munich Tel.: (+49-89) 2399-4512 Fax: (+49-89) 2399-4465 Printed by: European Patent Office, Munich Printed in Germany © European Patent Office ISBN 3-89605-074-5 a LIST OF CONTENTS page General Part Contents a 1. Preliminary remarks 1 2. Explanatory notes 1 2.1 Overview 1 2.2 Abbreviations 2 3. General remarks 3 4. Work at the EPO 3 5. Survey of the processing of applications and patents at the EPO 4 6. Contracting States to the EPC 5 7. Extension to states not party to the EPC 5 Part A – Guidelines for Formalities Examination Contents a Chapter I Introduction I-1 Chapter II Filing of applications and examination on filing II-1 Chapter III Examination of formal requirements III-1 – Annex List of Contracting States to the Paris Convention (see III, 6.2) III-20 Chapter IV Special provisions IV-1 Chapter V Communicating the formalities report; amendment of application; correction of errors V-1 Chapter VI Publication of application; request for examination and transmission of the dossier to Examining Division VI-1 Chapter VII Applications under the Patent Cooperation Treaty (PCT) before the EPO acting as a designated or elected Office VII-1 Chapter VIII Languages VIII-1 Chapter IX Common provisions IX-1 Chapter X Drawings X-1 Chapter XI Fees XI-1 Chapter XII Inspection of files; communication of information contained in files; consultation of the Register of European -
Evergreening" Metaphor in Intellectual Property Scholarship
University of Missouri School of Law Scholarship Repository Faculty Publications Faculty Scholarship 2019 The "Evergreening" Metaphor in Intellectual Property Scholarship Erika Lietzan University of Missouri School of Law, [email protected] Follow this and additional works at: https://scholarship.law.missouri.edu/facpubs Part of the Food and Drug Law Commons, Intellectual Property Law Commons, and the Science and Technology Law Commons Recommended Citation Erika Lietzan, The "Evergreening" Metaphor in Intellectual Property Scholarship, 53 Akron Law Review 805 (2019). Available at: https://scholarship.law.missouri.edu/facpubs/984 This Article is brought to you for free and open access by the Faculty Scholarship at University of Missouri School of Law Scholarship Repository. It has been accepted for inclusion in Faculty Publications by an authorized administrator of University of Missouri School of Law Scholarship Repository. For more information, please contact [email protected]. DATE DOWNLOADED: Wed Jan 20 13:42:00 2021 SOURCE: Content Downloaded from HeinOnline Citations: Bluebook 21st ed. Erika Lietzan, The "Evergreening" Metaphor in Intellectual Property Scholarship, 53 AKRON L. REV. 805 (2019). ALWD 6th ed. Lietzan, E. ., The "evergreening" metaphor in intellectual property scholarship, 53(4) Akron L. Rev. 805 (2019). APA 7th ed. Lietzan, E. (2019). The "evergreening" metaphor in intellectual property scholarship. Akron Law Review, 53(4), 805-872. Chicago 7th ed. Erika Lietzan, "The "Evergreening" Metaphor in Intellectual Property Scholarship," Akron Law Review 53, no. 4 (2019): 805-872 McGill Guide 9th ed. Erika Lietzan, "The "Evergreening" Metaphor in Intellectual Property Scholarship" (2019) 53:4 Akron L Rev 805. AGLC 4th ed. Erika Lietzan, 'The "Evergreening" Metaphor in Intellectual Property Scholarship' (2019) 53(4) Akron Law Review 805. -
Basic Questions About Patents and Utility Models If You Have an Patents Or Utility Models, Register It
6 Basic Questions about Patents and Utility Models If you have an patents or utility models, register it. The purpose of this brochure is to present frequently asked questions and their answers regarding Patents and Utility Models. 5 major areas The topics have been grouped into five major areas: 01. Purpose and duration 02. Procedure 03. Ownership and transfer 04. Searches 05. Protection abroad Patent owners must descri- be their inventions so that a normal expert in the field may process them. 01 Purpose and duration 1. What is a patent? What is a utility model? Patent and the utility models are titles granted by the State that give inventors the exclu- sive right to temporarily prevent others from manufacturing, selling or making commercial use of the protected invention in Spain. 2. What are the main obligations of a patent or utility model rights holder? In exchange for a monopoly over commercial use, rights holders are obliged to describe their inventions so that a normal expert in the field may duly process them. They have the further obligation to commercialize the patent or utility model, either directly or through a person they authorize to do so. 3. Is it compulsory to commercialize a patent or utility model? Patent holders are obliged to commercialize inventions directly or through a person they authorize, commercializing them in Spain or in a member state of the World Trade Organ- ization. Such commercialization must be carried out within a period of four years from the date of submission of the patent application, or three years from the date of publication of its granting (whichever expires later). -
Prior Art: to Search Or Not to Search
International JournalInt. J. Ind. of Industrial Organ. 28 Organization (2010) 507– 28521 (2010) 507–521 Contents lists available at ScienceDirect International Journal of Industrial Organization journal homepage: www.elsevier.com/locate/ijio Prior art: To search or not to search Vidya Atal, Talia Bar ⁎ Department of Economics, Cornell University, United States article info abstract Article history: To determine patentability, inventions are evaluated in light of existing prior art. Innovators have a duty to Received 15 October 2008 disclose any prior art that they are aware of, but have no obligation to search. We study innovators' Received in revised form 3 August 2009 incentives to search for prior art, their search intensities and the timing of search. We distinguish between Accepted 23 December 2009 early state of the art search—conducted before R&D investment, and novelty search—conducted right before Available online 11 January 2010 applying for a patent. We identify conditions in which innovators have no incentive to search for prior art. Search intensity increases with R&D cost, the examiners' expected search effort, and with patenting fees. We JEL classification: fi fi D83 also nd that innovators prefer to correlate their search technology with that of the patent of ce. In light of K our model, we discuss the implications of some proposed policy reforms. L2 © 2010 Elsevier B.V. All rights reserved. O31 O34 Keywords: Innovation Patent Prior art Research and development Search 1. Introduction intentionally omit any information they have that appears to be “by itself or in combination with other information” relevant for deter- The patent system was designed to provide incentives to innovate mining patentability. -
QUESTION 126 Methods and Principles of Novelty Evaluation In
QUESTION 126 Methods and principles of novelty evaluation in patent law Yearbook 1995/VIII, pages 383 - 385 Q126 36th Congress of Montréal, June 25 - 30, 1995 Question Q126 Methods and principles of novelty evaluation in patent law Resolution AIPPI - CONSIDERING that novelty is a basic requirement of all states for the patenting of an invention; - CONSIDERING that the criteria for determining novelty are not uniform for all states; - CONSIDERING that different criteria for determining novelty in different states may mean that an invention is patentable in one state and not in another and that this leads to uncertainty; - CONSIDERING the past efforts by AIPPI to promote the harmonization of patent legislations; - ACKNOWLEDGING that perfect harmonization is not always possible and that certain situations of prior rights in one state as opposed to another may permit the patenting of an invention in one but not an other of the states; - CONSIDERING past resolutions of AIPPI and in particular the Question 89C Resolution regarding self-collision (Sydney, 1988 - Yearbook 1988/II, pages 212- 213); 1 - CONSIDERING the work of AIPPI regarding Question 89 relating to harmonization and guidelines with respect thereto for presentation to WIPO (Yearbook 1991/I, pages 280 and following); and - CONFIRMING its position favourable to a more comprehensive grace period of uniform duration at an international level (Moscow 1982, Question 75, Yearbook 1982/III). TAKES THE FOLLOWING POSITION: 1. Novelty should be absolute whereby, without prejudice to the adoption of a grace period, any disclosure accessible to the public anywhere before the priority date of a patent application, or any other critical date for the assessment of novelty determined by national or regional laws, should be a basis for questioning the novelty of the invention claimed. -
Electronic Copy Available At
Policy Levers Tailoring Patent Law to Biotechnology. Comparing US and European Approaches Geertrui Van Overwalle Professor of IP Law at the University of Leuven (Belgium) Professor of Patent Law and New Technologies at the University of Tilburg (the Netherlands) Working paper – April 2010 To be published in University of California Irvine Law Review (forthcoming) Table of content 1. Introduction 1.1. “The patent crisis” 1.2. Objective and scope of the present study 1.2.1. European patent law 1.2.2. Policy levers 1.2.3. Biotechnology 2. Biotech-specific policy levers in Europe 2.1. Patent acquisition 2.1.1. Patentable subject matter – inventions and discoveries 2.1.2. Patentable subject matter – morality 2.1.3. Patentable subject matter – medical methods 2.1.4. Novelty – first and second medical use 2.1.5. Novelty – selection invention 2.1.6. Novelty – testing exemption 2.1.7. Inventive step – expectation of success 2.1.8. Inventive step – secondary indicia – commercial success 2.1.9. Industrial applicability 2.1.10. Skilled person 2.1.11. Enabling disclosure 2.2. Patent scope 2.2.1. Scope of product claims – absolute vs. limited scope 2.2.2. Clarity of claims 2.2.3. Breadth of claims 2.3. Patent rights and limitations 2.3.1. Research exemption 2.3.2. Compulsory licensing 2.3.3. Patent term 3. Conclusions 3.1. European policy levers in biotechnology 3.1.1. Policy levers 3.1.2. Macro versus micro policy levers 3.1.3. Statutory versus jurisprudential policy levers 3.1.4. Pre-grant versus post-grant policy levers 3.1.5. -
Income Hiding and Informal Redistribution: a Lab-In-The-Field Experiment in Senegal
Income Hiding and Informal Redistribution: A Lab-in-the-Field Experiment in Senegal Marie Boltz,∗ Joint with Karine Marazyan,† Paola Villar‡ § Job Market Paper November, 2015 - Latest version here Abstract This paper estimates the hidden cost of informal redistribution in economies where people heavily rely on their social networks and have limited access to financial markets. It is based on a lab-in-the- field experiment conducted in Senegal which uniquely combines a small-scale randomized controlled trial (RCT) and a lab experiment. The lab component allows us to estimate the cost of this informal redistribution, by eliciting the willingness-to-pay to hide income, and to identify the relevant popu- lation: two-thirds of the experiment participants are ready to forgo up to 14% of their gains to keep them private. Based on the RCT component, we find that giving people fearing the redistributive pressure the opportunity to hide allows them to decrease by 27% the share of gains they to kin as measured out of the lab. They reallocate this extra money to health and personal expenses. This is the first paper to both identify the individual cost of this informal redistribution and to relate it to real-life resource-allocation decisions in a controlled setting. JEL Classification: D13, D14, D31, C91, C93, O12 Keywords: informal redistribution, income observability, intra-family resource allocations, lab experiment in the field, Sub-Saharan Africa. ∗Paris School of Economics (PSE); Address: PSE, bureau A113, 48 boulevard Jourdan, 75014 Paris; e-mail: [email protected] †University of Paris 1 - IEDES - UMR “Developpement et Societes” ‡Institut National d’Etudes Demographiques (INED), Paris School of Economics (PSE) §The authors are thankful to the CEPREMAP, the PSE Research Fund, the Sarah Andrieux Fund, the Chair G-Mond, the IRD, and the UMR Développement et Société, for their financial support for this research project.