MASTER EN GESTION INTERNACIONAL Y COMERCIO EXTERIOR

- INTERNATIONAL
PATENTS
PROTECTION -
MODULO II DERECHO INTERNACIONAL

Profesor coordinador - IGNACIO MORALEJO

GROUP Nº 6

ENE, LOREDANA TATIANA (583182)

URREA ANDRES, CAROLINA (535553)

VILELLA PIÑ OL, CAROLINA (664392)

 TABLE OF CONTENTS

1) What is a Patent?

2) Differences between a patent, a trademark and a copyright

3) What does a Patent do?

4) What kind of Protection does a Patent offer?

5) What Rights does a Patent Owner have

6) Why are Patents necessary?

7) What Role do Patents Play in Everyday Life?

8) How is a Patent Granted?

9) What kinds of Inventions can be protected?

10) Who grants Patents?

11) How can a patent be obtained worldwide?

12) What is the PCT?

13) How can I find the patent laws of various countries?

14) Steps to follow in order to obtain a patent for an invention

15) Patents infringement -study cases

16) Appendix

17) Bibliography
1) What is a Patent?

A patent is an exclusive right granted by the State, for a limited time, usually 20 years from
the date of the invention application. This right allows the patent holder to prevent others from
making use of the patented technology. In general is a product or a process that provides a new
way of doing something, or offers a new technical solution to a problem.

An invention must meet the following conditions in order to be protected by a patent:

 must have practical use

 must introduce an element of novelty

 must show an inventive step.

2) Differences between a patent, a trademark and a copyright

There are mainly 3 types of ownership protection that can help people to ensure that what
they have innovated cannot be steeled by others – the patent, the trademark and the copyright.
But there is also some confusion about them and these concepts are tended to be used like
synonyms sometimes.

Even if there are some similarities among these intellectual property protection concepts,
they are different and serve for different purposes.

A copyright protects original works that fall under the categories of literature, dramatic,
musical, artistic, and intellectual. These works may be published or unpublished, and the
Copyright Act of 1976 gives the owner exclusive rights to reproduce his or her work in any
medium. A copyright protects a form of expression, but not the subject matter of the work. For
example, if someone wrote an article about a new car on the market, the text would be
copyrighted, preventing someone else from using that particular material. A copyright does not
prevent others from writing their own original article about this new car, however, or from
using or making the car themselves.

A trademark is used to protect a word, symbol, device, or name that is used for the
purpose of trading goods. The trademark indicates the source of goods and distinguishes them
from the goods of others. A trademark may also be used to prevent others from using a mark
that might be confused with another; trademarks, however, do not prevent other people or
businesses from producing the same product or services under a different mark.

3) What does a Patent do?

A patent provides to the patent holder protection for the invention he/she has created and
patented. The right conferred by the patent grant is “the right to exclude others from making,
using, offering for sale, or selling” the invention. What is granted is the right to exclude others
from making, using, offering… or doing whatever with the invention.

Patents also incent people to create products, offering them recognition for their creativity
and material reward for their inventions.

4) What kind of Protection does a Patent offer?

The patent protection means that the invention cannot be made, used, distributed or sold
without the consent of the patentee. Compliance with the patent rights are usually enforced by
the courts, most systems have the power to penalize infringements of the patent. Similarly, a
court can also declare a patent invalid if a third party obtains satisfaction in a dispute over the
patent.

5) What Rights does a Patent Owner have?

The owner or holder of a record has the right to use it exclusively in an economic trade of
goods, services or activities to be designated or protected.

The owner has the power to forbid others from using their own registered name, logotype or
similar ones to design products, services or related activities.

The brand is a normal business asset but may become the most valuable of all of them. It
can be sold or leased to third parties through licenses or franchises.
6) Why are Patents necessary?

Patents are a useful way to protect people’s creations. A patent offers the recognition of
having created and exclusive material and helps us assure that no one would be able to say that
he/she is the author of that material. These facts encourage people to create their own stuff,
enhancing innovation and creativity as well.

There are many situations that reflect the necessity of a patent.

7) What Role do Patents Play in Everyday Life?

Patents are not a tangible object that we can see, but they exist to accomplish an exact
function. Patented inventions cover every aspect of our life, from electric lighting (patent held
by Edison and Swan) to microprocessors (patent held by Intel).

Apart from just patenting a material, all patent owners must publish information of their
invention that is, showing to the rest of the world their knowledge and helping others to create
their own products.

Patents not only provide protection for the owner, but also valuable information and
inspiration for the rest of the world.

8) How is a Patent Granted?

To grant a patent, the most important point is filling the patent application correctly. In that
document, the patent owner has to provide some important information about the material
itself, for example, the title of the invention, its technical field, background as well as a
description of the invention in clear language and enough detail to make it comprehensible for
everyone who reads it.

Not only a document is needed, but also visual materials such as photographs or diagrams
are a useful tool to describe the invention.
9) What kinds of Inventions can be protected?

To be protected, an invention must fulfill some conditions. First of all, it must be of

practical use, fulfilling a real function, moreover it must show novelty. Apart from these, an
invention needs to provide an unknown characteristic of the technical field, which the invention
belongs to. To end up with, all these requirements, must take into consideration the law as the
object has to be accepted as “patentable” by the current laws.

As an example, in many countries, some products that could be the substitute of a medical
treatment or a medicine are totally forbidden.

10) Who grants Patents?

Patents are granted by national patent offices or by regional offices – which works for
several countries. For instance US has a national Patent and Trademark Office, meanwhile The
European Union counts with a regional patent office – the European Patent Office, as well as
Africa – the African Regional Intellectual Property Organization.

In the case of Spain, there is a Spanish Office of Patents and Trademarks that started to
exist a lot of years ago in the 19th century and it was created with the following name: “Real
Conservatorio de Artes y Oficios”.

A national office is within a country and governs how patents are protected meanwhile
regional offices are based in multiple countries.

In regional systems, an applicant can request protection for his invention in one or more
countries – and it depends on each country if they offer patent protection within its borders or
not.

The Patent Cooperation Treaty (PCT) administered by WIPO (World Intellectual

Property Organization) provides a single international patent application to be filled in- having
the same effect as national applications filed in the designated countries.

These are mainly the primary regulatory authorities that grant patents around the world.
11) How can a patent be obtained worldwide?

Nowadays there is an increasing necessity of ‘international’ patents. Trying to make things

easier for patentees who want their patents in more than one country, it has appeared the PCT
and some other treaties aimed to break the barriers.

If an applicant wants a patent with a larger coverage for his invention he must fill
applications in each country he wants to have protection and the patent shall be granted and
enforced according with the law of each country if conceded.

There are some areas where, a regional patent office, for example, the European Patent
Office (EPO) and the African Regional Intellectual Property Organization (ARIPO), accepts
regional patent applications, or grants patents, which have the same effect as applications filed,
or patents granted, in the member States of that area.

The WIPO that was mentioned before is a specialized agency of the United Nations that
administers all the treaties related to patent protection and intellectual property. For example, it
administers the PCT, the Vienna Agreement, and the Rome Convention.

EPO is the European Office of Patents, created by the European Patent Agreement, also
named as Munich Agreement about patents. This agreement was signed the 5th October of
1973. The main objective of the Agreement was to establish a system of common law for the
concession of invention patents.

The EPO grants patents throughout a unique process because with the presentation of only
one application, the invention can be protected in all the member countries that are in the
agreement. The office has headquarters in: La Haya, Berlin, Munich and Viena as well.

Apart from the EPO, there are some other treaties that help us to protect our patents almost
worldwide, for instance the PCT.

Further, any resident or national of a Contracting State of the Patent Cooperation Treaty
(PCT) may file an international application under the PCT. A single international patent
application has the same effect as national applications filed in each designated Contracting
State of the PCT. However, under the PCT system, in order to obtain patent protection in the
designated States, a patent shall be granted by each designated State to the claimed invention
contained in the international application.
 The procedure and the requirements for granting a patent differ from country/region to
country/regional. Same goes for the fees amount.

12) What is the PCT?

The Patent Cooperation Treaty is a multilateral treaty that is in force since 1978 and is
administered by the World Intellectual Property Organization (WIPO).

The countries that take part in the treaty constitute an union to cooperate in the filing,
searching and examination of patent applications.

The PCT facilitates the processing of applications for the protection of inventions where
such protection is desired in several countries, establishing a system by which the presentation
of a single application produces the same effect as if the application had been filed in each of
the desired countries and designated by the applicant.

It is worth mention that the PCT is not a procedure for the grant of a patent and it does not
replace the national awards, but it is a system of unification of the processing prior to award,
which replaces the processing country by country and reduces the costs.

In the PCT, an office of the international treaty examines the formal aspects of the
documentation and sends it to the International Bureau of the Organization (WIPO) and to the
Search Authority (ISA) for the corresponding report on the above application.

Depending on the results of the report, the applicant may continue the procedure in the
national office of each State designated in the application (designated office).

The countries that belong to the PCT are listed in appendix 1.

Filing an international application under the PCT has many advantages for the applicants:

 one application is filed which has effect in all the member countries of the PCT;

 you only need to take into account one set of formalities;

 you do not need to provide a translation of the documents of your application into all
the languages of the countries that are in the treaty

 after filing a PCT application you receive an International Search Report (ISR) and an
examination report called a Written Opinion of the International Searching Authority (ISO)
which should give you an indication of the strength of your patent application before you
decide if you want to pursue patent protection or not

 the PCT system gives you extra time to reconsider the value of the
invention and its potential before paying high costs; and

 as there is no requirement for you to request an IPE or to enter the national phase for
any country, you may stop the process of the international application at any time you want to
avoid incurring further expense.

13) How can I find the patent laws of various countries?

There is a Collection of Laws that can be accessed electronically which provides

information regarding the legislation of intellectual property of a wide range of countries and
regions and also to the treaties on intellectual property administered by the World Intellectual
Property Organization (WIPO). Also the web sites of the nationals and regionals patent Offices
provide information regarding their specific legislation.

14) Steps to fallow in order to obtain a patent for an invention

There are three main ways of patenting an invention:

NATIONAL WAY that is based on the presentation of applications in all the countries that
is needed. Each application has different requirements depending on the country and their
particular laws and necessities and this way can cost a big amount of money and time.

INTERNATIONAL PCT WAY, the PCT system allows to apply for patent protection for
an invention in all the countries that are part of the international treaty (100 countries),
throughout a unique application named international application.

EUROPEAN WAY, throughout the direct application of an European patent with

designation of all the countries that belong to the European Convention of Patents (20 more or
less).
 In this project we are going to focus on the steps needed to patent an invention under the
PCT because it is the more useful way if we want our invention to be protected in a big amount
of countries.

The steps to take into account to fill the PCT application are the following ones:

The INTERNATIONAL PHASE, which takes place in the receiving office, the
International Office (OMPI) and the Administration that, is the responsible for the International
Search and the Preliminary International exam.

◦ The PCT application is filed: The Receiving Office (RO) checks the application in
order to see if there are mistakes. Then, a filing number is assigned to the application. The
approximate time of this process is from six to eight weeks.

◦ An International Search is carried out: The International Search is carried out by

the International Search Authority (ISA) to look if there is any relevant document describing
similar descriptions to the one that is in process of application.

The findings of that search are compiled in a search report called an International Search
Report (ISR). An examination report called Written Opinion of the International Searching
Authority (ISO) is also made. All these reports are sent to the agent in the International Bureau
(IB).

Applicant claims can be amended (under article 19) based on the findings of ISR and ISO.
Amendments must be made within 2 months of receiving the ISR and ISO or within 16 months
of the earliest priority date

As a PCT requirement, the ISR and ISO must be issued within three months of the
application’s lodgment date.

◦ The application is published by the IB: 18 months from the earliest priority
date, the IB publishes the application and the ISR. There is no provision for delay in publishing
the application — it can be published without the concluded ISR if necessary. At this moment,
if the applicant wishes to avoid or put off publication, a notice of withdrawal of the
international application, or of the priority claim, must reach the IB before the completion of
the technical preparations for international publication —this must be done no later than 15
working days before it is due to be published. At 30 months from the earliest priority date the
IB uses the ISO to establish the IPRP1 which is communicated to all designated offices.
◦ An International Preliminary Examination is requested: The applicant can
request an Optional Preliminary Examination (IPE) of the application that is called a demand.
The IPE is based on the ISO and any amendments that help the applicant refine the application
before deciding whether or not proceeding to the national phase.

This phase provides the applicant with:

 recognition of the priority date in all member countries of the PCT;

 access to an International Search Report (ISR), and an examination report called an
International Preliminary Report on Patentability (IPRP) which allows the applicant to assess
the patentability of the invention;
 a WIPO publication number and PCT application number. These numbers are useful
when selling the invention for the reason that they prove that the applicant has applied for a
patent;
 the opportunity to modify the application — taking into account any reports or searches
 the fee of the International application includes the presentation, International Search,
the Written Opinion and the publication of the application.

The NATIONAL PHASE. Usually by the end of 30 months from the priority date, the
applicant will have to ask for the international application to proceed separately as a standard
patent application in the countries that have been selected by him for patent protection. The
applicant needs to take certain actions in order for the application to enter the national phase
and these actions must be completed before the relevant deadline. Most countries allow 30
months from the priority date in which to enter the national phase, although some, like
Australia, allow 31 months. A small number of countries still require the applicant to request
entry to the national phase before 20 months from the priority date unless he has filed a demand
(request) for an IPE that was lodged within 19 months of the priority date. It is vital to check
the timing requirements of each individual country to enter to the national phase. To proceed in
the national phase the applicant must indicate to each office that he is entering the national
phase in that country. He would be required to pay the necessary national fees to those offices
and supply any translations that may be required. The national offices will examine the
application under their domestic law and grant or refuse a patent, according to their own
national patent law. It is not necessary to enter the national phase in all countries. You should
The national phase

 allows the solicitor to pursue his patent application in separate countries that are
selected, either directly or through a regional patent office such as the European Patent Office
(EPO);

 may be faster because any barriers to patentability have been identified in the
international phase.

15) Patent Infringement - study cases

A patent gives the owner the right to exclude others from making, using, offering for sale or
selling his patented invention.

Despite this, nowadays, patent infringement occurs in all industries and all sectors of the
economy. And the patent holder is the person that has to fight this unauthorized use of property
/ intellectual property.

Following, several infringement cases are presented in order to have a better understanding
and a more in-depth view of what patents are and their legal implications if not respected.

NOKIA AGAINST APPLE

In March of this year the Finnish group Nokia has filed a lawsuit claiming damages for the
use of Apple in seven of its patents in most of its devices. Besides this, Nokia also filed a
complaint with the International Trade Commission accusing Apple of infringing several
patents in mobile phones, portable music players, tablets and computers.

These claims are in addition to those previously presented by Nokia, which accused the
company considering that the Apple iPhone violated several of its patents. Specifically, the
firm referred to ten patents related to the technology, like wireless data, encryption and voice
encryption and security, to make the devices compatible with one or more standards and notes
that iPhones have violated these rights from launch in 2007.
 Nokia and Apple have been involved in a legal battle over two years for a patent,
a fight that ends with payment by Apple of a sum that is not known yet to the European
manufacturer of mobile phones, plus an agreement to license patents of Nokia.

According to the mentioned statement, over the past two decades, Nokia has invested
approximately 43 million euros in research and development and built a portfolio of wireless
industry intellectual property rights "stronger and broader" with more than 10,000 families of
patents.

The licensing agreement is terminating all patent lawsuits between the companies. Since
Apple said he was happy to have ended two years of struggle and enter Nokia's licensing
program.

Apple's lawyers probably have seen that there were many chances of losing lawsuits against
Nokia and have been forced to sign an amicable agreement with the Finnish company to avoid
having to pay an amount that may be higher than they have done reaching this agreement with
Nokia.

KODAK AGAINST APPLE AND RIM

Eastman Kodak filed suit against Apple and Research In Motion (RIM), claiming that
smartphones of both companies infringe a digital imaging technology of their own.

According to Kodak, iPhones, Apple, and camera equipment BlackBerry, RIM, infringe a
patent for preview of image. Kodak also presented an application to Apple for patent violation
of articles related to digital cameras and certain processes of computers.

The director of Kodak's intellectual property says that the company has tried for years to
enter into negotiations with these two companies, but failed to reach any satisfactory
agreement. Kodak seeks fair compensation for the use of its technology.

The company already has agreements with manufacturers like Nokia, Motorola, Sony or
Panasonic related to its technology, and probably these days, they have signed a new
partnership agreement with LG Electronics and Samsung Electronics.
 Kodak asked the federal agency to prohibit Apple and RIM to sell phones since the agency
can stop the import of products and parts made with the technology in dispute, but this does not
threaten the sale of these smart phones, because the patent processes usually take months or
years and often are solved with licensing agreements and royalty payments.

GOOGLE AGAINST MICROSOFT

Microsoft continues the war against Android, a mobile system powered by Google; the
strategy seems to be one based on trying to stop patent applications of device manufacturers
that use this system.

A few months ago Microsoft made a complaint to the company Motorola for the user
interface, tab management, interaction with documents and Web browsing.

Now, Microsoft has reintroduced another lawsuit for alleged patent infringement against the
e-book reader Nook the Barnes & Noble and manufacturers Foxconn International and
Inventec.

The responsible for intellectual property licensing of Microsoft says that "the Android
platform Microsoft patent infringement and companies that manufacture and sell Android
devices must respect our intellectual property rights."

Another of the companies that have invested in Android, HTC, reached an agreement with
Microsoft before this particular patent suit. Thus, the dramatic rise benefits of Android HTC
Microsoft charged for its use.

NINTENDO AGAINST THINKOPTICS

Thinkoptics is a new company that apparently has designed a "pointer system for computer
and television," called Wavit, which is capable of interacting with more things than only
television using its motion sensor. It is also possible to adjust the room lighting where you are,
the oven temperature, and change the volume of music. The device, supposedly uses radio
frequency and infrared.

The firm says that Wii, the console of the Japanese giant, violates patents on the
manufacture of Wavit, the particular point of the complaint is that it was filed a few days ago,
when the device Nintendo had almost 5 years on the market.

Thinkoptics ensures that all the elements that are part of the console violate their patents
from the controls to the infrared sensor, or even the games.

But the peculiarity of this demand is the site chosen for presentation. The manufacturer of
Wavit papers sent the complaint to the District Court of Eastern Texas. This does not guarantee
that you will win in his crusade against Nintendo, but such legal entity has earned a reputation
for speaking generally in favor of those with the allegations.

Several retail chains and distribution of hardware and video games have also been involved
in informing, including Wal-Mart, RadioShack, GameStop and JC Penney, and others.

GRADIENT TECHNOLOGIES AGAINST SKYPE

Skype has been sued for patent violation, just a day after explaining how their infrastructure
works.

Gradient Technologies, is a firm known as patent troll, that is, their patent their inventions
with the main intention to initiate actions in order to make patent claims and that is referred as:
"method to detect, report and respond to network events in the nodes level ", whose registration
was granted in February this year.

The company won the creation of decentralized software to monitor and provide security to
a network, whose control is distributed using nodes through mobile agents. Precisely, this
coincides with the explanation provided by Skype on the technology of supernodes, which are
composed of millions of individual connections between computers and telephones.
 The curious fact is that the conflict started when this information became public through the
Skype blog, showing also that patent trolls are always on the prowl, looking for the perfect time
to start these lawsuits that usually are millionaires.

16) Appendix

 Appendix 1 – The list of PCT countries members

  Appendix 2 – Glossary of terms

Article 19 amendment: An optional amendment that is applied to the claims of the

amendment international application. The applicant should make these amendments directly to
WIPO after the receipt of the international search report, and Written opinion of the
International Searching Authority.

Demand: An application for International Preliminary Examination. This form is separate from
the PCT Request (or application) form.
Examiner may issue one or more written opinions before the International Preliminary Report
on Patentability is issued.

International Search: A patentability search, not an infringement search, and accordingly

should not be relied upon to identify patents which may be infringed by the claimed invention.

IPEO: International Preliminary Examination Opinion. The International Preliminary

ISO: Written opinion of the International Searching Authority. It is issued automatically with
the International Search Report and covers all issues under international preliminary
examination.

PCT: Patent Cooperation Treaty.

WIPO: World Intellectual Property Organization.

17) Bibliography

LIBROS
  PATENTES, MARCAS Y DISEÑO INDUSTRIAL
Editorial: Civitas, S.A.
Autor: María Teresa Soler Cantalapiedra

 PATENT FAILURE
How judges, bureaucrats, and lawyers put innovators at risk
Editorial: Princeton University Press
Authors: James Bessen y Michel J. Meurer

 INTERNATIONAL PATENT LITIGATION

Developing an effective strategy
Editorial: Globe Business publishing
Author: David Wilson

PAGINAS WEB

 http://www.ddsmedia.net/blog/tag/violacion-de-patentes/

 http://eh.net/encyclopedia/article/khan.patents

 http://www.wipo.int/classifications/ipc/en/

 http://www.patenteducation.com/patentarticles.html

 http://www.wipo.int 

 http://eh.net/encyclopedia/article/khan.patents

 http://www.kapler.com/pct.htm