| Friday 10 September, 2010 |
GöteborgBIO
Medicinaregatan 8A
SE- 413 46 Göteborg
Sweden
Phone: +46 (0)31 - 61 24 02
Fax: +46 (0)31 - 41 97 00
It´s certainly true that it costs a great deal of money to obtain a patent. For this very reason it´s important to give the matter some thought for the sums invested to pay off.
“It´s essential to protect your business. A lot of companies spend money and energy protecting the wrong things," says Bo Möllstam, who has long experience of patent issues from a corporate perspective and has, among other things, been a part of the government´s biopatent committee.
At one time the idea behind a patent was to create mechanisms allowing technical developments to continue. In exchange for inventors publishing their ideas, the inventions received exclusives rights to their idea for a period of twenty years.
All patents are public documents and databases exist, which can be searched by anyone wanting to know more about the situation in the area in which they are working.
Unique
“Check out what is going on in the world at large. You can do a lot of searches yourself using the free databases available." This is the first tip given by Bo Möllstam.
“There are too many cases where a team of researchers has wasted their resources by spending time and money on research that has already been done somewhere else. You can carry out an initial check on your own. I would say that many people make their biggest mistake by not doing their homework properly. A lot of patent descriptions can also serve as valuable material for research as such — and not just from a commercial point of view."
Once you´ve established that your invention appears to be unique, it´s time to think about what exactly should be protected by a patent.
“A surprising number of people look upon patents as a technical issue. In order to guarantee that the commercial angle is taken into account, it´s a good idea to involve someone to look at the commercial aspects. What´s more, there´s no need to patent everything. There are certain things you can protect simply by keeping quiet about them."
Patent process
An illustration of this is what is known as a process patent, which may be about special manufacturing methods. It´s often difficult to prove that someone else has infringed your process patent, so this may not be where to spend money on patent protection. After all, you don´t have to patent everything.
Once you have decided what you want to patent it is important to keep the idea secret until you have filed your application, as one of the requirements of patentability is that the invention is not previously known. Also, there must be a certain degree of inventiveness and must have industrial potential.
Patent worldwide
In USA the person who first comes up with the idea (or anyone who can prove to be the first) is the person who is considered to own the right to the patent. In other parts of the world, Sweden included, it´s the first person to file a patent application who is considered to own the patent right.
Photo: private
So how much does a patent cost? According to Bo Möllstam, a patent in force in the usual number of markets in an area such as life science will cost in the region of SEK 1.5—2 million and take several years to acquire. A major part of the costs is for translations.
“One tip if you want to buy time and in this way spread the costs is to make a PCT (Patent Cooperation Treaty) application covering around 140 countries. This doesn´t mean a direct patent, but it gives you a period of grace of up to thirty months before you need to extend your application to other countries."
InEuropethere is now the London Agreement, which has been accepted by thirteen countries, where it is sufficient to have made a translation into one of the largest languages. On the other hand, there is no common European patent — as yet.
Text: Annika Risberg
Patents in figures
- In 2007 the Swedish Patent and Registration Office (PRV) received 2,925 patent applications, an increase of 70 per cent on the previous year.
- Measured by the number of applications for international patents made per head of population, Sweden came second in 2007. The list is headed by Switzerland.
Recommended links
http://www.prv.se/Proffs
The PRV has listed here a number of patent databases, most of them national ones.
http://se.espacenet.com
This gives access to over 50 million national and international patents. It is a relatively new service provided by PRV and so far it allows you to carry out searches covering the previous 24 months.
www.epo.org
The European Patent Office. If you succeed in getting your patent granted here, it is valid in all the member states you have selected.
www.google.com/patents
Contains all American patents from 1970 onwards.
www.nordiskapatent.se
Covers all Swedish patents for which a full-text search is possible.
http://patft.uspto.gov
All American patents from 1970 onwards. There are good search operations and the patents are shown in full text in image format.
Photo: Mannheimer Swartling
Research and development collaborations, it is hoped, will lead to results for which the parties involved will have some use, such as for example a patent or a copyright. I often observe the following problems:
1. The parties unfortunately are often unclear when it comes to background rights; who brings what with them into the collaboration and what cannot in any way be regarded as part of the result of the collaboration. It may, for example, be research results of one of the parties that have not been made subject to patent protection. It is therefore important that the parties involved make it clear to each other what they bring with them into the collaboration. Doing so makes it far easier to know what the result of their collaboration is.
2. In order to be able to use the result of the collaboration between the parties in accordance with point 1 above, there may very well be a need to use some of the background rights of one of the parties. The extent to which this may be done and in return for what payment, should be agreed by the parties in the collaboration contract.
3. Finally it should be made clear in this contract who is to own the final results of the collaboration, how they should be exploited and so on. For example it is often inappropriate for individuals to be joint owners of a patent. It is far better to package the patent in a company in which both parties own equal numbers of shares, as there are clearer rules for resolving disputes in such cases than in a direct joint ownership of a patent.
Niklas Sjöblom
Attorney-at-law, responsible for the law firm Mannheimer Swartling Advokatbyrå´s specialist department for Intellectual Property Rights, Market Law and Media Law in Western Sweden .
Photo: Awapatent
novelty aspect of your idea
before you take the decision
to submit a patent application.
Unfortunately it happens all
too often that scientists
describe their patentable
inventions at conferences or in
articles written before filing for a
patent, and such announcements
make it difficult, and sometimes
even impossible, to obtain
approved, widely framed and
sustainable patent protection.
It may be worth knowing that the
examiners at the patent authorities
often google the inventor´s name
in order to find out what scientific
articles he or she has contributed
to, the aim being to check that the
invention has not already entered
the public domain."
--------------------------------------
Photo: Delphi
property rights, such as copyrights
and trademarks, are important
assets for a company. It´s
important to ensure that the
company actually owns the
rights to these assets. Our
best tip for patents, therefore,
is to draw up effective
agreements with inventors
and other originators/authors
whose services you use,
including employees and
consultants, in order to avoid
unpleasant surprises and
discussions at a later date
about who the rights
belongs to."
-------------------------------------
“Make sure that you have support
for the full extent of the claim in
the description when you draw up
an application. If support is not
available the first time you file an
application, i.e. in the application
that sets the priority date, make
sure you use the priority year to
fill in the gaps with experimental
data or other evidence so that you
have a fully satisfactory application
at the end of the priority year.
After this time, the principle of
what´s done is what applies."
