Anyone who has an innovative idea should consider filing a patent application to safeguard the rights to the idea. However, it is a long way from an idea to a patent. Not all ideas can be protected by a patent and the examination procedures at the patent offices are often time-consuming and complex.
This is where our patent attorneys come in. They assess whether the idea is generally patentable, they draft a patent application, and they represent you extensively before the patent offices to best protect the idea. Furthermore, they assist you when others infringe the patent and offer products or use methods falling within the scope of the patent.
The following text will give inventors who have not yet been involved with patents a first overview of patent application proceedings. They will explain which kind of protection is achievable with a patent, and the requirements which an idea has to fulfill to get a patent. Moreover, the examination procedure at a patent office and examples of strategies for patent protection abroad are explained.
1. What is a patent?
A patent gives its owner the exclusive right to use the invention protected by the patent for a period of up to 20 years. In other words, the patent owner (within the territory of the state that has granted the patent) has a monopoly, which means the right to prevent others from commercially using the invention protected by the patent.
This right can be of high economic value, because the owner can limit who uses the patented item or the patented method. For example, the inventor can ensure that the patented idea can only be realised by using items or methods only offered by themselves. The patent owner may also grant the right of use to others, however, this grant may be subject to licensing fees. Thereby, the inventor participates in the commercial success of another company based on the idea.
2. What makes an idea an invention?
Basically, an idea needs to fulfill three requirements before a patent can be granted. The idea must be in a field in which patent protection is possible. In addition, the idea has to be new, as well as inventive, i.e., not-obvious. Each one of the three conditions will be explained below in more detail.
2.1 Patentability
Not all ideas can be protected by patents. Essentially, only ideas which fall into a technical field are patentable. Moreover, the German Patent Act and the European Patent Convention explicitly exclude some areas from patent protection.
These areas include, among others, plant or animal varieties as well as essentially biological processes for the production of plants or animals. Furthermore, methods for the treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body are excluded.
Further areas are excluded by the German Patent Act and the European Patent Convention if the subject matter relates to the area “as such”. This includes discoveries, scientific theories and mathematical methods, aesthetic creations, schemes, rules and methods for performing mental acts, playing games or doing business, as well as programs for computers and representations of information.
The wording “as such” does not generally exclude inventions in this area. For example, if an idea affects a scientific theory, which is applied technically in a certain machine or in a procedure, the idea can by all means be patentable. A similar problem also exists for programs used in data processing units. If the program is based on technical considerations or a technical problem is solved by the program, it is no longer a program for data processing units “as such” and falls in principle in a patentable area.
The decision to determine whether the idea belongs to a patentable area can nowadays be very difficult, since methods and products have become more and more dependent upon data processing. As considerable economic advantages may be associated with the patent, it is worthwhile to have this question clarified by our patent attorneys. They can not only clarify whether the idea is patentable in general; they are also able to show alternatives on how the idea can be protected.
2.2 Novelty
To gain protection by a patent, the idea also needs to be novel. The novelty required by patent law is an absolute novelty with regards to all publications made worldwide – regardless of language – and all disclosures made before the day of the patent application. This also includes publications and disclosures made by the inventor.
In general, it is advisable to get an overview of the relevant state of the art before filing a patent application. Such a patent search should always be conducted by a patent attorney.
However, the inventor can also do a first search to get a first overview. By using the internet, it is often possible to gain information about the companies working in this area. Patent offices mainly use published patent applications and patents to determine the patentability of an idea. Therefore, a search in patent databases might be useful. The German Patent and Trademark Office (http://depatisnet.dpma.de) and the European Patent Office (http://worldwide.espacenet.com) offer access to such databases free of charge. A search can be performed by typing in keywords to find documents which may already describe the idea or similar approaches.
Afterwards, the search results must be compared to the idea of the inventor. If none of the found documents shows all the features of the idea, the idea can be considered novel, at least with respect to the results of the search. In cases of doubt, a patent attorney should do the comparison. Based on their experience, the patent attorney is better able to assess if a remaining difference between the idea and the search result is relevant regarding patent law and thus is able to determine whether there is a possibility to get the patent granted.
2.3 Inventive step
However, the novelty of an idea on its own is not sufficient. The idea must also be inventive. This third and most difficult obstacle can only be overcome if it was not obvious at the day of the application to a person skilled in the relevant technical field to alter the current state of the art, such that the new idea would evolve. The patent offices have created various methods and criteria to assess this question. By using these methods and criteria, a patent attorney can determine if the new idea will likely be regarded as inventive by the patent office with regards to the publications found in the patent search.
