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, but the observation which enabled the invention to be made was made by chance by a researcher in Lund. 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, conducted further research and eventually obtained a patent for the invention ‘titanium screws’ – 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 cannot be patented, nor can 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, where 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?
In addition to the requirement for an invention to be a technical solution to a problem, a number of other very important requirements are imposed 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 had been made public anywhere in the world at the time the application is submitted will be considered to be known and therefore 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. The reason why there is a requirement for clarity is that one of the aims of patent law is to encourage inventors to share their technical solutions with the rest of society. By doing this, 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. Someone who has supplementary protection for a pharmaceutical can apply for an extension of a further six months if research is being carried out into effects on children.
1.5 What uses can the holder of a patent prohibit?
Patent rights are what is known as a negative right, which 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 (1) manufacturing and marketing patent-protected products, (2) using a patent-protected procedure, and (3) 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 to ensure that they 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 could be said that the specific exclusive right under intellectual property law is lost in respect of an individual example when someone places their 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 submitted to the European Patent Office (EPO), which has its head office in Munich. If the EPO approves an application and grants a European patent, the applicant can request that the patent be granted validity in all or some of the European states participating in the collaboration. Within a certain period of time following the EPO’s decision, anyone who is granted a European patent can then notify PRV that the patent is to have the same effect in Sweden as a patent granted by PRV. PRV will not carry out any further assessment. The only requirements are that the patent holder submits a Swedish translation of the patent document or least the patent claims, and pays a fee for PRV to publish the translation. Once this has been done, the patent is valid as a Swedish patent.
The European Patent Convention (EPC) sets out rules concerning the procedure in the EPO. The regulations are very similar to the Swedish Patent Act. The EPC is formally completely separate from the EU. However, intensive negotiations are under way concerning the introduction of a ”European patent with unitary effect". The current proposals are partly based on a European patent granted by the EPO being given “unitary effect”, meaning among other things that disputes concerning a patent will no longer need to be resolved by different national courts, but can be considered by a new special European court for patent cases.
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 that a party that has submitted a patent application in one country can then apply for a patent for the same invention in other convention states within a period of 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 for a patent application is concentrated on one or a few patent authorities worldwide (PRV is one of them), but does not force an individual treaty state to grant a patent based on the results of the centralised novelty investigation. Each country still has an unconditional right to approve or reject a patent application. There is no global patent.