Month: October 2014

Everything You Need to Know about PCT

If you want to patent an invention or need to get involved with the world of patenting in some regard, you need to understand what PCT is and how it affects the international rules of patenting. PCT stands for the Patent Cooperation Treaty, a patent law treaty signed in 1970. In essence, it is a set of legal regulations that govern the procedure of patent application in all the countries that contract PCT.

One creates a PCT application, also known as an international patent application, in one language. The application is filed with the RO (Receiving Office). Next, it gets transferred to the ISA (International Searching Authority) that conducts a thorough search for similar patented objects. The applicant also receives an official opinion about the patentability of the invention. If all the necessary examinations are cleared successfully, the applicant’s national patenting authority issues a patent.

Technically, filing a PCT application doesn’t guarantee that you will actually receive the patent, because there are no “international patents”. The issue of patents is handled by the local authorities. This means that every country that contracts PCT must decide whether it agrees with issuing this particular patent. Because of this, you may be able to get the exclusive rights you seek only in some of the countries. However, filing a PCT application makes the process much easier and cheaper on the inventor, because it relieves him or her from the need to appeal to every country’s patenting authority individually.

History and Member Countries

Although the treaty itself was signed in 1970, it became active only in 1978. The first PCT application was filed on the 1st of June 1978. The International Patent Cooperation Union (an organization that consists of the countries that contract the PCT) started with 18 member countries.

Over the years, IPCU has evolved, and today almost every country (148 countries total) in the world is a member of this union. The most notable exceptions from the list are Taiwan and Argentina. Saudi Arabia and Iran were the last countries to join the IPCU. They became members in 2013.

There are very few types of inventions that do not fall under the PCT’s regulations. This means that every person who believes that he or she has indeed developed a notable invention can try applying for an international patent. The best thing about this is that after the official search is complete and you are presented with the report, you will be able to see whether acquiring patents in all the countries you aim for will indeed be profitable for your business.

Patent Applications: Overview

The first thing you need to do in order to obtain a patent is to file a patent application. This is a special request that you will have to file with a patent office. The very process of applying for a patent is also called the “patent application”.

Please note that you need to file an application with the right patent office. In this case, “right” means one which has the jurisdiction to grant patents within the geographic area of the patent coverage. In regards to this, there exist three types of applications:

  • National applications: These applications are filed in order to obtain a patent that will be active in the country of this particular office.
  • Regional applications: This application can have effects in several countries. For example, an application filed with the European Patent Office will provide you with a patent that will be active in all or some of the countries of the European Patent Convention. The major benefit of regional applications is that filing one of those saves you from the need to obtain a national patent in each country.
  • International applications under PCT: PCT stands for the Patent Cooperation Treaty that is operated by the World Intellectual Property Organization. The organization itself doesn’t grant patents. However, this system allows you to file a single application that will eventually lead you to obtain patents in some or all of the countries that contract PCT. In this case, the vast majority of the formalities are handled by WIPO. Filing this type of application will significantly cut down your costs if you need to get a patent in many countries.

Patent Application Types

There are several specific types of applications defined by patent offices. Although every office has its own set of names for different applications, all of them can be grouped into the following categories:

  • Standard applications: This application contains all the required parts (claims and written description of the invention).
  • Provisional applications: These applications allow you to secure a filing date. They are cheaper than standard applications and don’t have similar disclosure requirements. A standard application can follow a provisional application if you decide to pursue a patent. If not, the provisional application will simply expire.
  • Continuation applications: These are filed in order to continue previous applications. This option is perfect if your provisional application is about to expire but your project still needs to be refined.
  • Divisional applications: This application is “divided” from the original application. This option is used in case a unity of invention objection is issued.

Interesting Things You Should Know About Patents

Patenting is a rather complex field that may seem dull and uninspiring. However, quite a few interesting developments occur in it from time to time, especially in regards to patent disputes.

Here is a short list of peculiar facts about patents that will make you see this field with a new perspective:

  • There are “trolls” in patenting. Every person who uses social networks today must have encountered a “troll” at some point. They are extremely obnoxious and annoying people whose only goals in life seems to be goading others into arguments. A “patent troll” is a company that patents some invention for the sole purpose of suing others for supposed violations of their rights. These lawsuits slow down the progress and cost American businesses around $29 billion a year. Some policies and laws are currently being developed to make the very existence of “patent trolling” impossible.
  • Some patents are really silly. Apparently, being sensible isn’t a necessary requirement for a patentable object. History has some examples of patents that can only be described as silly. For example, there is a patented method of swinging on a swing, a case for bananas, a face-mask that prevents eating, a gerbil shirt, and the list just goes on.
  • The real American patent boom occurred between 1915 and 1916. In 2011, the U.S. Patent Office granted approximately 120,000 patents. This may seem like a lot, but this number is merely a drop in the ocean when compared to the statistics of 1915-1916. During these two years, the Patent Office granted about 400 patents per person. Please note that the population of America at that time was around 100,000,000.
  • Patents are expensive. The average price of a patent is approximately $500,000. Some patents can cost up to $1,000,000. The funny thing is that despite the fact that people are willing to make these large payments to get the desired document, many of them allow their patents to expire after the initial four year period. The reason behind this is their refusal to pay the $900 yearly maintenance fee.
    • There is a much better and cheaper alternative to patents. Declaring your invention to be a trade secret can be more beneficial than patenting it. In this case, the object will be protected by employment law and nondisclosure agreements. Unlike a patent that will expire in a few years, a trade secret can remain a secret in perpetuity unless it is breached by one of the parties. If this happens, the person responsible for the leak will face charges of corporate espionage and breach of confidentiality.

Approach to Software Patents: The US Versus the EU

The U.S. and the European Union have rather different approaches to patenting software. These differences make it easier for developers to patent their creations in the EU.

In one of the cases heard by the U.S. Supreme Court in 2014, it was announced that a special two-step test must be implemented in order to determine whether an invention is patentable. The first part of the test determines whether the subject of the testing falls into the “unpatentable” category, such as laws of nature or abstract ideas. The second part of the test is used to find out if the subject is created through an inventive application of an idea or law of nature. This approach makes it rather difficult to patent software, as it is usually deemed to be excluded from the area of patenting.

At the first glance, it may seem that the situation in Europe should be even worse, as EU laws have a provision stating that software should be excluded from patenting by default. However, local lawyers found a way around this restriction, which resulted in a de minimis application of said provision. They are using the fact that the EU patenting legislation considers “technical character” to be a synonym to “invention”. This means that everything that can be labeled “technical character” can be patented, and anything even remotely related to computers can be deemed as a “technical character”.

In Europe, the patent eligibility threshold for software is a mere formality, but U.S. courts do not accept this kind of approach. U.S. rules state that software is an ineligible subject for patenting, so no amount of creative wording can change the judge’s view on this matter. The European courts aren’t very supportive of this practice either. However, there is not much they can do if the patent application was worded in a specific way. Due to these formalities, almost every software patent claim in the EU is accepted.

The problem with the U.S. approach to software patenting could be solved if the courts put more faith in the technical application test. The current system that is based on determining patentability suffers because the very concept of “abstract idea” is too vague. It needs to be clarified in order to prove or disprove whether the subject of the patent claim falls into this category.

Should a better “test of abstraction” be created, the problem will be easily solved. Unfortunately, no significant steps have been taken in this direction so far. This is why many software developers prefer to operate from Europe.