What can be patented?
For an invention to be patentable, it must fulfill various requirements, in particular:
- The invention has to be new. In order to be new, it must differ from what is already publicly known. Note: It can easily occur that the inventor herself/himself destroys the novelty of the invention by disclosing it to a third party without secrecy agreement.
- The invention may not be obvious in relation to the state of the art. “Obviousness” is judged from the point of view of a hypothetical expert skilled in the relevant technical field. The starting point is the state of the art in the relevant technical field, and the problem is identified which is solved by the invention. If the state of the art encourages or leads the expert to choose a certain solution to the problem, this solution is considered to be obvious — if not, the solution is considered to be inventive.
- An invention is required to have technical character. Computer programs as such or methods for doing business are, in many countries, not patentable. However, as soon as e.g. a technical problem is solved or technical considerations are required, patent protection may be available.
In addition to the above, further requirements apply, such as “industrial applicability”, which however play a minor role in most cases.
The question of whether a specific invention may be patentable should be discussed with your patent attorney, who will be familiar with the requirements and practice of the major patent offices world wide and who will be able to advise you on how to best protect an invention by means of patents or other intellectual property law rights .
The first step should generally be a meeting with your patent attorney. Such a meeting should take place before the invention is disclosed to anyone not bound by a secrecy agreement.
In the meeting, the invention to be protected can be discussed and analysed in detail. Advice can be obtained on whether the invention is patentable, whether a search is to be carried out, where protection is to be sought, what costs are to be expected, and what procedures and strategies should be chosen.
There are a number of ways to obtain patent protection for an invention. For example, a national patent application can be filed with one or more national patent offices. In addition to this, a number of international treaties have established types of patent applications that are valid in several countries simultaneously, such as “European patent applications” and “international patent applications”.
In many cases, a first patent application will be filed at a single patent office. If protection is to be sought through further patent offices, further applications are filed within one year from the first application. These further applications can claim the “priority” of the first application. This strategy has the advantage of keeping the initial costs low.
The best filing strategy in a given situation will need to be assessed on a case-by-case basis because it depends on a plurality of issues that should be discussed with your patent attorney.
In order to determine whether an invention can be patented, the “state of the art” must be established, i.e. everything that has been published prior to the first filing of a patent application. The state of the art is determined in a search.
Various types of searches are available, with substantial differences in scope and price. For example, there are some publicly accessible databases where a search may be free (see “Links”), while a professional search combining database queries and manual review of paper documents may cost thousands of Swiss Francs.
A search can be carried out before or after a patent application is filed. Searches subsequent to the filing of the patent application are mandatory in some countries and are carried out by the patent offices. Searches prior to filing have the advantage that they allow the costs of filing to be saved if the search shows that the invention is already known. However, a professional search usually requires weeks or months to be carried out, which may be an unacceptable delay before filing an application. Furthermore, most of the searches carried out prior to filing an application are not recognized by the patent office, i.e. the patent office will still carry out its own search when the application is filed.
A first search is often conducted by the inventor herself/himself using public databases. Although this cannot replace an official search it may provide valuable information that allows a better understanding of what can be patented.
The decision as to whether, when, and which type of search should be conducted will depend to a great extent on the time that is available and on the amount of money set aside for this purpose. It will also depend on the country or countries where protection is to be sought. Hence it is impossible to lay down a general rule as to how and when a search should be carried out and this is rather a question which must be discussed for each case individually.
The costs for filing an application and having a patent granted depend to a great extent on the patent office(s) where the application is filed, on the complexity of preparing the application, on the results of searches that are carried out, and on the expediency of the examination. In the following, we give some typical figures, but it should be borne in mind that some of them have a substantial range of variation.
- Preparing and Filing a patent application costs typically between CHF 5’000 and CHF 10’000, depending on country, patent office and complexity of the case. In complex cases, these costs can, however, reach or even exceed CHF 15’000. A more accurate estimate can generally be given after a preliminary discussion of the case.
- The costs until the patent is granted depend substantially on the patent office. Swiss patent applications are, for example, only subject to a formal examination, such that the costs until grant are low. For European applications, which undergo a multi-step search and examination procedure, total costs of CHF 10’000 to CHF 15’000 will typically accrue over a period of approximately four years, and the filing of translations after grant, as required in some countries, will incur further costs of, typically, CHF 2’000 per country (depending on the extent of the text to be translated).
- In order to keep a patent in force, annual fees (annuity fees) have to be paid, which usually vary according to the age of the patent, and which differ from country to country. Typically, they are of the order of CHF 500 to CHF 2’000 per year.
- Upon request, a more accurate estimate can be provided for individual cases.
It should be noted that a patent application can usually be withdrawn at any time if an applicant has lost interest in a protection, thereby avoiding any follow-up costs.
In principle, an invention is owned by the inventor. However, most countries (such as Switzerland) have laws for the right to an invention to automatically be transferred to a third party, in particular if the invention is made by an employee.
The question as to whether a product infringes the patent of a third party can be of major importance to a company. Depending on specific circumstances, various steps can be taken to protect a company at least partially from such threats.
For example, an “infringement search” may be carried out before releasing a new product in order to ascertain whether the product infringes existing patents. Such infringement search (or “freedom to operate” search) can be fairly expensive. If the new product is, for example, an electric razor, a number of its components potentially may infringe third party patents, such as the motor driving the razor, the electronic controlling the charger, the design of the blades, the metal alloy used as a protection layer of the blades, etc. Hence, in order to carry out a comprehensive infringement search, a large number of patents from many technical fields may have to be searched. For each patent that might, at first sight, be infringed, the scope of the claims will have to be analysed to determine whether the new razor falls within the scope of protection of the patent, which often requires an in-depth study of the patent.
Due to cost constraints, a comprehensive infringement search is the exception rather than the rule. In many cases, infringement searches are limited to partial searches, concentrating on one or a few aspects of the new device where an infringement appears most probable, or concentrating on the patents of one or a few competitors. Such a restriction limits the scope and reliability of the search, but can reduce the costs considerably.
Apart from an infringement search, other measures may help to reduce the risk or the consequences of infringement. For example, a producer can request his suppliers to certify that components supplied by them do not infringe patents of third parties, and that any damages resulting from one or more of their components infringing such patents will be covered by the supplier. Our attorneys can assist in drafting suitable contracts for this purpose.
It will often also be advisable to monitor the patenting activities of the most important competitors. Many patent attorneys, patent offices and other providers offer such monitoring services designed to retrieve copies of any patent applications or patents published in a certain technical field or by a certain source on a regular basis, for example in monthly or quarterly intervals. This type of monitoring service should be carefully planned, and the rules defining the search reviewed regularly in order to ensure that effective coverage is provided without the number of documents which need to be reviewed becoming too large.