11 August 2012

What is a Patent Anyway?

This is a surprisingly tricky question to answer. But in my view the best way of doing so is to go back to the reasoning behind the patent systems of the world.

An effective patent system is based on a quid pro quo. The governments of most countries agree to provide an inventor/s with a monopoly in the invention for a certain period of time. In return, the inventor/s agrees to provide enough information to the public to permit a skilled person to put a working embodiment of the invention into practice once the patent expires.

Some form of instrument is required to facilitate the quid pro quo. That instrument is a written document and is called a patent. Or, to use the jargon, a Letters Patent.

The government must carry out some form of investigation to assess whether or not it should enter into such an agreement with the inventor/s. A patent can effectively prevent the entire population of a country from exploiting the invention. It follows that the government, in the form of its patent office, carries out an examination, on behalf of its public, of the application for the patent to assess whether or not the public should be so burdened. This examination is an essential part of establishing the quid pro quo and should therefore be carried out diligently and professionally on behalf of the public and the inventor/s.  In Australia, the patent office is known as IP Australia.



It follows that the application for the patent needs to perform two primary functions. First, it must present a clear definition of the invention to the patent authorities. Second, it must contain sufficient information to permit a person of ordinary skill in the field of the invention to practice the invention. These are referred to as intrinsic requirements. Failure to meet these requirements would usually result in a patent not being granted. It is also possible for a court to find that these requirements are not met and to revoke a granted patent.

These intrinsic requirements are embodied in a patent specification. Preparing patent specifications is possibly the most important and demanding function performed by patent attorneys. The analysis of a typical patent specification is for another post. In short, the invention is defined in a series of "claims" that usually appear at the end of the written portion of the specification. The enabling information is usually contained in drawings, which are found in most non-chemical specifications, and in a portion that we refer to as the "body" of the specification.

Provided the above intrinsic requirements are met, the authorities carry out a full examination based on the patent specification. This relates to the three primary requirements of a valid patent. The invention must be proper subject matter for a patent, it must be "novel" on the date on which the patent application is filed and it must incorporate an "inventive step". I'm not going to go into any detail at this stage to avoid this post becoming unwieldy. There is plenty of information on this blog and on my site concerning these requirements.

Assessment of proper "subject matter" is an intrinsic investigation into whether or not the invention, of itself, can be the subject of a valid patent.

The "novelty" and "inventive step" requirements are determined using what is known as "prior art". Prior art is that body of knowledge that exists at the time of filing the patent application. In short, an invention is "novel" if it was not used, disclosed or otherwise made available to the public prior to the date of filing the first patent application for the invention. An invention incorporates an "inventive step" if, at that date of filing, the invention would not be "obvious" to a person skilled in the field with reference to the prior art. I have set these requirements out very simply here for convenience. Particularly "inventive step" can be complex and difficult to understand. It can also differ significantly between jurisdictions.

The authorities usually carry out searches through major patent databases to investigate whether or not the invention complies with these requirements.  The allocated examiner will issue an adverse examination report if he or she is of the opinion that the invention does not comply with these or any other requirements. In Australia, that sets a deadline for your patent attorney to overcome all the objections.

Once the examiner is satisfied that the requirements are met, he or she will permit the patent to be granted. In effect, this is the government agreeing to the quid pro quo. A Letters Patent issues to signify this agreement. The patent specification associated with the Letters Patent is made available to the public, usually in an electronic form, so that interested parties can assess their position vis-a-vis the rights of the owner of the patent.

A patent is property. It can be leased (licensed), sold, transferred or otherwise dealt with as any other movable property.  It is this feature that provides real monetary value to a patent. In other words, patents are a commodity. In the giant patent battles that are taking place, it is often the player with the larger number of patents that has the edge. That said, it only takes one patent to cripple a competitor, if that patent is carefully prepared and is relevant to the patentee's field of endeavour.

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