Step 1: Patents
A patent is used to protect a novel technical solution to a problem and gives an exclusive right to use an invention. If you want exclusive rights to your invention and to prevent competitors from using it without paying for it, you should apply for a patent.
Case: Screws which fool the body
Titanium screws are an invention which helps people who are in need of new teeth, feet and fingers. They are a technical solution which is used worldwide. The observation which enabled the invention to be made was made by chance by a researcher in Lund. It all started during an experiment in the 1950s. Per-Ingvar Brånemark noticed that a titanium instrument had become enveloped and embedded in the bone structure of a rabbit. The body normally rejects foreign bodies, but not on this occasion. Titanium “fools” the body into thinking that it belongs there. Per-Ingvar Brånemark realised that the observation was important. He conducted further research and eventually obtained a patent for the invention ‘titanium screws’. That is a screw which grows into the jawbone and which can be used to secure dental implants. The method is called osseointegration (osseo=bone) and the invention was first used in 1965 to give a toothless patient new teeth. Today, the technique is also used to secure various types of prosthetics, such as finger and leg prosthetics.
1.1 What can be protected by a patent?
The Patent Act states that an "invention which is susceptible of industrial application" can lead to a patent being granted. There is no explanation as to what is considered to be an invention in the sense of the law. A good starting point is that it should concern a "technical solution to a problem". In this context, it is often noted that the invention should be technical in nature, have a technical effect and be reproducible. The term ‘reproducible’ means that the outcome should in principle be identical every time the invention is used.
The Patent Act also contains a list of what cannot be patented. This list is quite long:
- Basic discoveries of phenomena in nature
- scientific theories
- mathematical methods
- artistic creations
- plans, rules or methods for intellectual activity, for games or for commercial activity.
These phenomena are not normally considered to be technical solutions to a problem. Phenomena which are excluded from patents include computer software and the presentation of information. However, there are examples where computer software or mathematical methods form part of an entirety. In these cases the entirety is considered to be a technical solution to a problem. However, the computer software on its own cannot lead to a patent. However, it can be protected through copyright; read more in Chapter 4 on copyright and computer software.
1.2 What is required in order for an invention to be granted a patent?
There is a requirement for an invention to be a technical solution to a problem. There are also a number of other very important requirements for patentability. The invention must (1) be novel and (2) it must differ significantly from what was known previously. In order for a patent to be granted, the patent application must also fulfil certain formal requirements (3).
(1) The requirement for an invention to be novel is very strict in patent law. Everything that is public anywhere in the world at the time the application is submitted will be seen as known. Therefore, it will be seen as impossible to obtain a patent for. The information may be given in any language. It is of no consequence whether it is the patent applicant or anyone else who published the invention. Once the technical solution has become available, e.g. on the internet, it will not be possible to subsequently submit a patent application. There is then what is known as ‘a novelty destroying disclosure’ for the patent. When someone submits an application to the PRV, PRV’s task is
to investigate whether an identical solution to a problem had already been published anywhere else in the world before the patent application was submitted.
(2) It is not sufficient for the invention to be novel. It must also differ significantly from what was known when the patent application was submitted. This is usually known as the requirement for "inventiveness".
(3) There are a number of formal requirements concerning the layout of a patent application. It must include a number of sections. In addition to a clear description, the patent application must contain patent claims, a summary and (frequently) drawings. These sections are also published by the patent authority when a patent is subsequently granted. One of the aims of patent law is to encourage inventors to share their inventions with the rest of society. This is the reason to why there is a requirement for clarity. By sharing the invention, the inventor will contribute to technical development. Patents and some patent applications are public and patent registers are therefore a fantastic source of technical information. Have a look through the Swedish Patent Database or Espacenet. A patent claim is specific information concerning what the applicant is seeking protection for. As will become apparent later (see 1.6 below), patent claims are the most important aspect of a patent that has been granted.
1.3 Who can obtain a patent?
As a general rule, it is the inventor who is entitled to apply for a patent. Only natural persons, i.e. living people, can be an inventor.
It can sometimes be difficult to determine who should be considered the inventor. Often, particularly within the research community, several people have made an invention together. Patents can also be held by a number of people. The Patent Act does not regulate very clearly what should happen if several people have made an invention. One good idea is to draw up an agreement concerning who should apply for the patent and how the invention is to be commercialised.
Many inventions are created by people who are employed by a company. In some cases, a law concerning employees’ inventions entitles the employer to take over the right of inventors to apply for a patent.
Companies hold most patents. Companies must acquire the right to apply for a patent through, for example, an agreement or the abovementioned law. However, no agreement can be established concerning the inventorship. A person is either an inventor or they are not. It is the right to apply and hold a patent that an agreement can be reached upon.
The right to a patent application and a patent can also be transferred to someone else through inheritance or a will.
1.4 How long are patents valid for?
The general rule is that a patent can be valid for up to 20 years from the date on which the patent application is submitted. A prerequisite for this is that the holder of the patent pays an annual fee to the patent authority. If the holder fails to make any payments, the patent application or patent will cease to be valid.
There is also something called ‘supplementary protection’. Supplementary protection may become relevant for pharmaceuticals (and plant protection products) and can apply for up to a further five years. For research that is being carried out into effects on children, it can be an extension of further six months.
1.5 What uses can the holder of a patent prohibit?
Patent rights are what is known as a negative right. It means that the patent holder can prohibit others from using the invention in certain ways. However, a patent does not mean that the patent holder themselves always have the right to use their invention. Other laws may prevent use, such as firearms legislation and requirements for special authorisation to market and sell pharmaceuticals.
The Patent Act lists a number of uses (actions) which the patent holder can prevent. These primarily concern:
- manufacturing and marketing patent-protected products,
- using a patent-protected procedure,
- using or marketing a product which has been created through a patent-protected procedure.
The term “procedure” means, for example, a method for producing something.
1.6 What protection does a patent provide against similar phenomena?
Patent claims are part of a patent application and are specified in the granted patent. Patent claims set out the scope of protection. The patent therefore only protects what is specified in the patent claims. It is not the product or method which has been invented which is protected by the patent, but what is specified in the patent’s patent claims. For this reason, it is extremely important that patent claims are well-formulated. They ensure that the patent cover as much as possible of what the inventor has invented.
1.7 What restrictions are there on the exclusive rights?
There are a number of restrictions on the patent right. A number of actions are excepted from the exclusive rights. Examples of restrictions are non-commercial use and certain experiments on the invention. If you consider an invention to be sufficiently good, you can therefore produce and utilise it privately without the permission of a patent holder.
In addition, the resale of examples which have already been sold somewhere within the EEA with the permission of the patent holder is permitted. This is a principle which applies generally to intellectual property rights and is known as exhaustion of the right. It means the exclusive right is lost when someone places their individual protected example on a market within the EEA.
1.8 Possible recourses in the event of infringement?
In Chapter 5, you can read about the recourses which a right holder has open to them if someone else utilises their rights. The recourses are very similar within the various intellectual property laws. They are therefore considered collectively. In Chapter 5, you can read about how you can earn money on intellectual property rights.
1.9 Patents internationally
The prerequisites for being granted and using a patent are ultimately regulated in national legislation. The general rule is therefore that a Swedish patent is required for protection in Sweden and that a Swedish patent has no effect abroad. Originally, the only option open to anyone wanting to obtain patent protection in Sweden was to submit an application to PRV. However, an alternative path is available. An application for a European patent can be filed with the European Patent Office (EPO), headquartered in Munich. Upon grant of a European patent, the patent holder needs to request that the patent be valid in all or some of the contracting member states. This is achieved either by validating the patent or by requesting unitary effect.
Validation means that the patent is confirmed separately in each of the countries where the patent holder wishes it to apply. For the patent to be valid in Sweden, the patent holder must file a request to that effect with PRV. No further examination will be carried out. The only requirements are that a Swedish translation of the patent claims is furnished, and a publication fee paid. In some cases, the full specification needs to be translated. Once these requirements are met, the patent will have the same effect as if it had been granted here.
Alternatively, a European patent with unitary patent provides regional protection without the need for separate validations. The unitary patent system applies only to participating EU member states. Once a European patent has been granted by the EPO, the patent holder will be able to request unitary effect. This is instead of validating it in individual countries. A unitary patent will provide the same protection with the same legal consequences in all participating states. Furthermore, within this system disputes about European patents no longer need to be resolved by different national courts. They are litigated in a new European specialised court, the Unified Patent Court (UPC).
The EU has otherwise not had a particularly significant impact on patent legislation in Europe. However, some EU legal instruments have led to greater coordination of national rules. This particularly applies to a directive dating from 1998 concerning patentability for biotechnical inventions. The provisions concerning supplementary protection for patented pharmaceuticals and plant protection products are based on EU regulations. Internationally, the Paris Convention which was referred to in the introduction, should also be mentioned. In addition to the fact that actors from other convention states must be treated equality, the Paris Convention refers to the possibility of priority. Priority means you can apply for a patent in other convention states with a submitted patent application in one country. The application must be for the same invention, and you must apply within one year. Priority is important in ensuring that applications do not constitute a novelty destroying disclosure for each other. An applicant can thus submit an application to PRV and obtain a preliminary assessment after around six months. If the assessment is promising, the applicant can then submit corresponding applications in other countries during the rest of the year.
There is also a global convention concerning patent collaboration (Patent Cooperation Treaty, PCT). This convention makes it easier for those looking to apply for patents in many countries simultaneously. The PCT system means that the novelty investigation is concentrated on one or a few patent authorities worldwide. PRV is one of them. An individual state doesn’t have to grant a patent based on the results of the novelty investigation. Each country still has an unconditional right to approve or reject a patent application. There is no global patent.