Cours Droit Fiscal 2020

10/29/2019
Propriété intellectuelle
Droit des brevets
Vincent Cassiers
Chargé de cours à l’UCLouvain Avocat au barreau de Bruxelles

vincent.cassiers@uclouvain.be Vincent.Cassiers@Linetotake.com
Chapter III: Patents
I. Legal framework
II. Origin and function of patents
III. Subject matter of patents and criteria for protection
IV. Patent filing procedures
V. Ownership of patents, transfer and licenses
VI. Term of protection
VII.Scope of patent rights
VIII.Limitations on patents and exceptions
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Section I: Patents legal framework
I. Legal framework
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Section II: Origin and function of patents
IV. Function of patent law
- Patent is an incentive to innovate with technical inventions

(development of industry)
- Patent is an incentive to share innovation with the public (enrichment
of the public domain).
- Two essential rules of patent law
- The inventor receives an exclusive right for a limited term: the
exclusive right stimulates investments in R&D by making
inventions profitable
- The society receives a new knowledge: the inventor must
disclose his invention in the patent application
- Patent is understood a social contract between the inventor and the
society
V. Patents in the 21st century (Source : WIPO IP indicators – 2013)
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V. Patents in the 21st century (Source : WIPO IP indicators – 2013)
V. Patents in the 21st century
o Exponential increase in the number of patents

o Worldwide competition  need to grow trough innovation
o Enlargement of the scope of patentability
o Offices are overloaded and the quality of the patents decreases
Patent is a strategic issue:

- Patents thickets: Freedom to operate : impossible  impossible to
innovate
- Patent portfolio’s and patent pools : competition issue (oligopolies)
- Patent trolls : no economic advantage
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I. Legal framework
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Section III: Subject matter of patents and

criteria for protection
I. Subject matter of patents (criteria for protection)
Trip’s, article 27 and EPC, article 52:
European patents shall be granted for any inventions, in all fields of

technology, provided that they are new, involve an inventive step and are
susceptible of industrial application
1. An invention
2. That is new (novelty)
3. Involving an inventive step
4. Susceptible of industrial application

1. An invention
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1. An invention  categories of patentable inventions
a) Product inventions
Cover a new product: a material object comprising characteristics which are

not present in existing similar products.
The novelty can come from the composition of the product or from its
structure.
The new product can be a new thing:
e.g. aspirin, saxophone, nylon, dynamite,…
The new product can be an existing object with new properties:
e.g. a door that is fire resistant

b) Process inventions
A process invention is a system using a method and/or means (mechanical,
chemical, biological,…) in order to produce a product or to achieve a result.
- The produced product can be new  patentable product

e.g. a new process producing a vaccine against HIV : new process (process
patent) and new product (product patent) – 2 patents
- The produced product can be known  not patentable product

e.g. a new process to change water to wine:
new process (process patent)
but known product (no patent) – 1 patent
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b) Process inventions
- The produced result is never patentable: no patent protection for

results because one same result can be achieved trough different means
e.g. process producing a bread which freshness lasts longer: result can be
achieved with a cooking process, with a special packaging, with special
ingredients….
A patent on one identified process cannot protect the result achieved or the
scope of the patent protection would extend to any other inventions,
products, processes achieving the same result  would prevent the
development of new inventions.

c) Application inventions: Inventions using well known means to produce

a new result.
The novelty lies in the relation between the means and the result.
e.g. the use of electric cables to transport digital signals (internet trough
electricity)
The new result is essential to make the distinction between patentable
application inventions and non patentable mere new use of a known product.
e.g. the use of photovoltaic cells for the production of electricity is known for
houses. Application of photovoltaic cells for the production of electricity for
the energy supply of an electric motor is not an invention
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d) Combination inventions: Inventions using well known means to make

them work together in order to achieve a given result.
The components must act together (patentable) and not be a mere
juxtaposition (not patentable)
e.g. the ball point pen VS the pencil with an eraser

1. An invention
o Impossible to precisely define the invention: it something that we do not

know yet
o Definition: An invention is a technical solution to a technical problem by
the controlled use of natural forces (living or physical)
o The invention is a rule

o A rule is stable, repeatable
o A receipt leading to a precise result: the result is never patentable,
only the manner to achieve the result can be patented.
o Idem: the idea is not patentable; only the concrete realization of the
idea is patentable.
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1. An invention
o Invention is a rule
e.g. to create a vaccine for the flu, you need to mix component “A” at 77%
with component “B” at 23%
o Invention is a technical rule: a rule that uses natural forces
o Rules using intellectual forces are not patentable
o Methods for teaching, running a company, programming a computer,

business methods, therapeutic methods= excluded from the scope of
patentability

1. An invention
o Rules using intellectual forces are not patentable

o Rules of a game, rules of law, rules of accounting….
o Tests: intelligence tests, psychological tests… = not patentable
o A “technical rule” means a rule using natural forces in order to use a

material in order to produce a specific result.
o Technical means material >< concepts, ideas, methods = immaterial and

non technical
o The technical character of the invention exclude also aesthetic creations
from the scope of patentability (but copyright and designs and models)
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1. An invention = technical solution to a technical problem
Technical problem: typing rods are blocking if typing

speed is too high
Technical solutions:
- azerty (owner A)
- ball typewriter (IBM)

1. Who may produce what ?
AZERTY (A)
TYPING BALL (IBM)

AZERTY + TYPING BALL (A , IBM)
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1. An invention
o Invention is a creation; it cannot be a mere discovery

A discovery describes a law. An invention solve a problem.
e.g. discovery of a law of nature (E=MC2)  not patentable

e.g. practical application of the law to create something new (compact discs)
patentable
e.g. discovery of a new plant or animal  not patentable

e.g. discovery of a therapeutic effect of the plant and creation of medicine 
patentable

1. An invention
o Discovery = description of something that exists in the nature
o Invention = human intervention on the nature to create something that

did not exist.
e.g. discovery of a new material on the moon that is resistant to extreme

temperatures : not patentable
e.g. use of this material to create a new oven = human intervention =

patentable
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1. An invention
o Special case: biotechnologies. Directive 98/44/EC

o Biotechnologies are technologies using living materials
Biological material which is isolated from its natural environment or

produced by means of a technical process may be the subject of an
invention even if it previously occurred in nature,
 Patentability of discoveries


1. An invention
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2. The novelty requirement
The novelty requirement

- refer to the function of the patent: stimulation of innovation by rewarding
it  the invention must be new
- Refer to the social contract: the patent grant is only socially legitimate if
it concern a new knowledge for the society which enrich the society.
a) Novelty in comparison with “the state of the art”
Art. 54 EPC: “an invention shall be considered to be new if it does not form
part of the state of the art”

a) Novelty in comparison with “the state of the art”
Art. 54 EPC: “The state of the art shall be held to comprise everything
made available to the public by means of a written or oral description, by
use, or in any other way, before the date of filing of the European patent
application”.
“everything made available to the public before the date of filing” is “prior
art”.
If the invention is identical to prior art: there is no novelty  not patentable.
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o Prior art must be accessible: 3 criteria
- Materially accessible
E.g. a document on the Internet is materially accessible.
E.g. a document in a locked safe is not materially accessible.
- Intellectually accessible
E.g. the disclosure of a GMO technology to students in architecture is not
relevant – they cannot understand the content of the disclosure
E.g. the disclosure of a GMO technology to students in biotechnology is
relevant – they can understand the content of the disclosure
 Prior art include common knowledge of a usual person skilled in the art

o Prior art must be accessible: 3 criteria
- Legally accessible
The person(s) who receives the information cannot be bound by a
confidentiality duty based on the law (employees), the contract (NDA’s), the
professional rules (lawyers), the customs.
E.g. disclosure of an invention to an employee is not a relevant disclosure

E.g. disclosure of an invention to a potential client is a relevant disclosure
E.g. disclosure of an invention to a potential partner who’s involved in the
negotiation of a partnership agreement: not relevant because of duty of
confidentiality based on duty of good faith during the negotiation of the
contract.
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o Prior art must be accessible:
- Effective and real access to the information must not be proven: the
possibility of access is sufficient.
E.g. document placed in a public library = accessible

E.g. document received by the public library but not yet registered in its
catalog = not accessible.
- Possibility of access without limitation of time, place, medium (written

documents and oral disclosures), language, etc.

o Prior art can be made accessible by:
- Public disclosure of the invention

e.g. conference, scientific publication, promotional leaflets,…
The disclosure can be made orally but it is necessary to prove its existence
and its date.
- Public use of the invention

E.g. the sale of the product.
E.g. the exposure of the invention  depends on the circumstances
If the invention can be understood from its sight : disclosure
If additional explanation / dismantling is necessary: no disclosure
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o Prior art must be made accessible to the public:
- Worldwide public: anybody, anywhere

e.g. Neem tree case. The tree has many medicinal applications commonly
known by some Indian communities (digestion, insects, skin care…).
WRG obtain an European patent for the use of Neem tree as fungicide.
Patent later revoked because of lack of novelty: this property was already
known in some Indian villages.
- The public is not limited to persons skilled in the art (professionals) but
intellectual access is required.
- The number of people who can access the information is not relevant:
one person is sufficient (this person can disclose the information
afterwards)

o Prior art must be made accessible to the public:
- One exception: the content of patent application not yet published at the
moment of the second patent application but later published.
The unpublished patent application is not accessible to the public.

Purpose: avoiding double patent on the same invention.
Eg. Patent application 1 on January 1st. Patent application 2 on January 30.
Patent application 1 is not yet accessible to the public but destroys the
novelty of patent application 2.
Conditions: the patent application 1 is later published (not abandoned) and

both patent applications refer to the same territories (principle of
independence of the patents).
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o The date of the prior art:
- The novelty of the invention is examined on the date of the filing of

the patent application (not on the date of the invention)
Eg. Date of the invention is January 1st.

The inventor publish a scientific contribution disclosing the invention on
March 28.
Patent application is filed on September 10.
 Novelty on September 10 ? No: publication on March 28 destroys
novelty.

o The content of prior art:
- Prior art must include all the characteristics of the invention
Not possible to combine various prior arts to rebuild the invention.

One single prior art must contain the entire invention: all the technical
characteristics and producing the same result as the invention.
- Exception:
1/ Combination of various documents if this combination is suggested in one
document from the prior art.
2/ Combination of one document from the prior art with general knowledge
of the person skilled in the art.
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o Exceptions to the novelty:
1/ The priority claim

- Problem : novelty must be established worldwide on the date of the
filing of the patent application
- Issue 1: The filing of the first patent application may lead to disclosure of
the invention and destruction of the novelty of any other patent
application: impossible to file patent applications in each country at the
same time.
- Issue 2: a second inventor might file patent application after the first
patent application in other countries or disclose the invention after the
filing of the patent application  the first inventor cannot obtain all his
patents.
- Solution: the priority period.

Art. 4 of the Paris Convention: The priority period is a period of 12

month after the first filing of a patent application during which
- the invention remains new even if it is disclosed and
- the applicant enjoys a priority on any other applicant
E.g. first patent application in France: May 1st, 2012. Priority term until
April 30, 2013. Other patent application in the USA on April 29, 2013
- Publication of the invention in Science on October 2, 2012  does not

destroy the novelty of the invention for patent applications until April 30,
2013
- Patent application by third party in USA on August 27, 2012  the first
patent applicant (France) can get the patent in the USA even if he came
later.
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Conditions for the priority period :
1. The first patent application must be regular (the patent application is

sufficient even if the application is later abandoned or rejected)
2. The first patent application and the other patent applications must have
the same content.
3. The priority must be claimed in the other patent applications (priority

claim = reference to the first application)
4. Only the first application creates a priority period. No priority arises

from the second, third,… applications

2/ The abusive disclosure (art. 55 EPC)

- The disclosure is the consequence of an evident abuse in relation to the
applicant or his legal predecessor
E.g. disclosure by a former employee.
- Term of 6 months to make the patent application
3/ Disclosure of the invention at an official, or officially recognized,

international exhibition falling within the terms of the Convention on
international exhibitions signed at Paris on 22 November 1928 (art. 55 EPC
– art. 11 Paris Convention)
- Term of 6 months to make the patent application
- Purpose: promotion of international exhibitions.
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1. An invention

3. The inventive step – Art. 56 EPC
“An invention shall be considered as involving an inventive step if, having

regard to the state of the art, it is not obvious to a person skilled in the
art”.
 The invention cannot be obvious to a person skilled in the art who knows
the state of the art.
 Invention must be a technical jump; it cannot simply follow from the
usual knowledge of a professional.
 Three elements: a) the professional; b) the state of the art; c) the non-
obviousness
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a) The person skilled in the art
The person skilled in the art is a normal, average professional having

common knowledge and skills in the field of the invention and having access
to all documents included in the state of the art.
E.g. invention in the field of aviation. The person skilled in the art is an
aeronautic engineer.
b) The state of the art = prior art
All information made accessible to the public before the date of the filing of
the patent application BUT not the unpublished patent applications
(difference with novelty requirement)

c) The non-obviousness
The person skilled in the art is able to combine different elements from the
state of the art.
Different elements from prior art can be combined to destroy the inventive
step requirement
Inventive step  having access to all elements of the state of the art, was the
invention obvious for a person skilled in the art at the date of the filing of a
patent application ?
Depends on the number of documents to combine. Do they come from close

fields or from very different fields?
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c) The non-obviousness
Clues of non-obviousness:
- Problem remains unsolved for a long time

- Commercial success of the invention
- Obvious advantage of the invention
- Easiness to use the invention

c) The non-obviousness: Problem and solution approach

4 steps reasoning :
• Determine “closest prior art” (one single prior art which constitutes the
most promising starting point for an obvious development in the
direction of the invention)
• Compare the invention with the closest prior art to determine the
distinguishing features
• Determine the “objective technical problem”. The distinguishing
features have certain technical effect. The “objective technical
problem” is the task of the skilled person to modify the closest prior art
to provide the technical effect.
• Obviousness reasoning. Faced with the objective technical problem
and starting from the closest prior art would it be obvious for the skilled
person to make the invention ? (could-would approach)
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c) The non-obviousness: Problem and solution approach
Closest prior art Invention
Obvious ? 
Depends on the technical problem to solve : cooking safely? Cooking

without odor? Cooking with adaptable intensity ? Cooking without
having to stock wood? Etc.
Source : SedLex, www.sedlex.fr


1. An invention
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4. The industrial application– Art. 57 EPC
“An invention shall be considered as susceptible of industrial application if it

can be made or used in any kind of industry, including agriculture”,
 The invention must be useful for the industry

- Made by the industry: a medicine
- Used by the industry: a process
Strange requirement taking into account the cost of a patent.
 Invention must be material, tangible, concrete, technical: not an idea, a

concept, a method, a theory

5. Legal exclusions from the scope of the patentability (art. 52 and 53

EPC)
- discoveries, scientific theories and mathematical methods;

- aesthetic creations;
- schemes, rules and methods for performing mental acts, playing games or
doing business,
e.g. : rules of a game, management methods (stock, human resources,
finance)
- programs for computers (but not an invention using a computer program);
- presentations of information.
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EPC)
- inventions the commercial exploitation of which would be contrary to

"ordre public" or morality (e.g. a virus)
Art. 27 Trips: “Ordre public” include protection of human, animal or

plant life or health and avoiding serious prejudice to the environment.
Exclusion of polluting inventions from the scope of patentability is

possible


EPC)
- inventions the commercial exploitation of which would be contrary to

"ordre public" or morality (e.g. a virus)
The mere fact that the use of the invention is not allowed by the law is
not sufficient. A strong damage must be established
e.g. “coyote” system is illegal in some countries but is a patentable
invention.
e.g. the sale of guns to the public is not allowed but guns are patentable
- plant or animal varieties, human body, etc. (see biotechnology)

- methods for treatment of the human or animal body by surgery or therapy
and diagnostic methods practiced on the human or animal body
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I. Legal framework
Section IV: Patent filing procedure
I. Introduction
Patent right is a formal right: the right exists at the time of patent grant  procedure
Patent is a territorial right = patent right is always limited to one territory
o Worldwide patent ? No
o Regional patents (many countries) ? Only one

1. A.I.P.O. Patent: French speaking countries of Africa
2. A.R.I.P.O. Patent : English-speaking countries of Africa (uniform procedure)
3. Eurasian Patent: Ex-USSR (uniform procedure)
4. European Patent: (uniform procedure)
5. Patent of the European Union: not existing yet but regional patent
o National patents: always excepted for AIPO

54 countries
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• Patent is a territorial right = patent right is always limited to one territory 

protection on various territories requires many patents  filing procedures
• Distinction between PROCEDURE and PATENT: an international / European

Procedure leads to national patents
• Why a procedure? To make sure that the patent requirements are fulfilled.
• Types of procedures:
o National
o European VS European Union
o International (PCT – Patent cooperation treaty)

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Patent is a territorial right = patent right is always limited to one territory  protection
on various territories requires many patents  filing procedures
Distinction between PROCEDURE and PATENT: an international / European

Procedure leads to national patents
National procedure
National
Patent grant
Patent
Patent right
application
56
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European procedure
European National
French Patent
right
Patent grant UK Patent right

Patent
application
German Patent
right
Etc.
57
International procedure (P.C.T.)

International Regional / national National
French Patent
right
Patent grant US Patent right

Patent
application
Chinese Patent
right
Etc.
Patentability
opinion
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A patent is valid in territories where the patent was granted and the
renewal fees were paid
Granted :
Protection
Refused : No
Protection
No Patent : No
Protection
Under examination :
Provisional protection
I. Distinction between procedure and patent: An international procedure

produces national patents
II. Usefulness of the procedure: assess the observance of the patentability

requirements
III. Types of procedures
a. International: PCT
b. European: EPO
c. National
d. Unitary: UE  EPO
60
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European Patent
38 States
+ 2 Extension
States
 Larger than E.U.

Independent from E.U
European Patent Convention

(Munchen, 1973)
 European Patent Office

(Munchen)
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Characteristics of the European Patent

o Single patent grant procedure for national patents
o European Patent Convention
- Grant procedure
- Patentability requirements
- Cancelation of the patent (grounds)
- National patent law
- Effect of the patents (rights conferred by the patent)
- Litigation procedure and damages
- No cumulative protection (national + European Patent): the national
patent cease to produce its effects as of the date of the entry into force of
the European Patent on the national
62 territory.
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1. Filing of the patent application
1. National office or EPO (post, Internet, fax)
2. Filing fee: 1.100 EUR
3. Complete document: description of the invention, claims, abstract,

drawings, priority claim, inventor, applicant, etc.
2. Formal examination
1. Complete application and payment of the fee
3. Search report on prior art
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4 . Preliminary opinion on the patentability
1. Continuation of the procedure
2. Modification of the patent application (reduced scope, not

enlargement of the patent)
3. Withdrawal of the patent application
5. Publication of the patent application
1. 18 months after the priority
2. Information of third parties
3. Temporary protection: same rights as those conferred by the patent
4. 6 months to ask for the continuation of the proceeding or application

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rejected
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6 . Substantive examination
1. Three experts in an examining division
2. Communication with the applicant. The examining division either:
o Send a patentability opinion to the applicant requesting a reply within

a certain time limit; or
o grants the patent, following an approval by all members of the

division. The text on which it is intended to grant a patent, including
amendments made by the examiner, is communicated to the applicant.
o The applicant may send his own comments and ask oral proceedings
o Appeal proceedings: technical board of appeal and enlarged board of

appeal 65
7 . Patent grant
1. Publication of the patent in the language of the proceedings
2. Translation of the claims into the two other EPO languages
8 . Validation of the patent in national States
1. Publication of the patent application + translation in national

language: temporary protection
2. Publication of the patent granted + translation (see London

Agreement) and payment of national tax : patent exclusive rights
66
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9 . Opposition procedure
1. 9 months as of the date of the publication of the patent
2. Third parties may ask the revocation of the patent
3. Opposition division and appeal proceedings (technical board of appeal

and enlarged board of appeal)
4. Advantage: retroactive effect + effect on the entire European territory
5. After opposition term: only national actions are possible: necessity to

act State by State.
6. Duration of the European procedure = 5 years
NB: Term of the patent : 20 years from the date of the patent application
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9 . Opposition procedure : 44% positive outcome!
68
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Invention becomes Validation at

visible to the public! national offices
TR
CH
y DER
O FR
GB
CZ
Application Search Opposition

Publication Examination Grant period
filed report
expires
18 months
Approx. 4-5 years 9 months
The International Procedure : PCT – Patent Cooperation Treaty
I. Single desk:
• One application  Patent protection in 142 States (national / regional)

WIPO – World Intellectual Property Organization
II. Time saving strategy :
1. Worldwide patent rights secured during 30 months after the date of the
patent application with 1.000 EUR
2. Search of partners, suppliers, employees, manufacturers, distribution

network, invention improvements, investors, market studies,…
3. Extension of the protection from 20 to 21 years

70
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30 months 100.000 EUR

1.000 EUR
Month 12 • International search

report
• Patent • Preliminary opinion on
Month 30
application in • International the patentability
patent • National /
small state • Publication of the
application Regional phase
• Priority date patent application
• Worldwide term • Investors,
of protection partners, etc.
Month 0 • 1.000 EUR
Month 18

+/- t+5 y.
CN
Secret ! REFUSED PATENT
Anyone may file a
patent application Confidentiality
for the invention Patent application can be withdrawn without f+20 y.
(First to file) leaving any trace GRANTED
Claim B
US
End of patent’s life
US
t0 t+4-8 m. t+12 m. t+18 m. t+30 m.
DE
GRANTED
International Publication FR
Invention Priority Filing Search Report EP Claim A
Extension End of PCT NO
Any country of First assessment The patent
Entering in
the Paris of the validty of Formal procedure to application Nal/Ral
Convention for the Patent enter in designated becomes public Examination
Protection of Application countrie of the through official
Validation (EP)
Annuities
Annuities
Annuities
Industrial Patent Coorperation pubblication

Property Treaty
(Letter Box for 144
countries)
 Duration of a patent : 20 years from filing /extension date

 A patent application is filed, the examined (patentability, clearness, sufficient disclosure,…)
and eventually becomes a patent after grant
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Priority : September 18,1997
PCT : September 17, 1998 (priority + 12)
Publication: March 25, 1999 (priority + 18)
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I. Term of protection
1. 20 years as of the date of the filing of the patent application
2. Independence of patent rights: 20 years as of the date of EACH patent

application
II. Entry into force of the patent rights
1. Publication of the patent application (no patent granted): temporary

protection
2. Date of the publication of the patent (patent granted): full protection

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III. Priority term : 12 months as of the date of the first patent application
1. Invention remains novel
2. First inventor enjoys a priority on any other inventor
 Strategic issue: extension of the term of the protection from 20 to 21

years: waiting until the last day of the priority term to file all patent
applications except one
 Strategic issue 2: the priority term is time to find investors, partners,

suppliers, clients, employees, improvements…
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Content of the patent
1. The cover page
2. The description of the invention
3. The claims
4. The drawings
5. The abstract
6. The search report
7. The preliminary opinion on the patentability
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Reveal
invention
(disclosure)
Patent applicant
Get Public
exclusivity
(patent)
Patent is a social contract
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Description
Patent offices (examination) and courts (invalidation
« The European patent proceedings) check of the correct balance between
application shall disclose disclosure and right to exclude
the invention in a manner
sufficiently clear and
complete for it to be
carried out by a person
skillet in the art. » (art.
83/EPC)
Disclosure to the public of an Invention

Claims :
which is new, inventive and susceptible Right to exclude
of industrial application others « The extent of the
protection conferred by
a European patent or a
European patent
application shall be
determined by the
claims. Nevertheless,
the description and
drawings shall be used
Description Claims to interpret the
Drawings claims. » (art. 69/EPC)
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Reference of the patent
Existence
of the right
International classification
Term of
protection
Real inventor :
no right
First patent
application
Temporary
protection
Patent
holder
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2/ The description of the invention (art. 83 EPC)
oAdvantage for the society: receives new knowledge.
oThe applicant must disclose the invention in a manner sufficiently clear and
complete for it to be carried out by a person skilled in the art.
The person skilled in the art must be able to reproduce the invention on the
sole basis of the disclosure of the invention in the patent application.
Issue for the applicant: disclose only what it necessary to obtain the patent
and keep the related know-how (best mode) secret  continue to have an
advantage after the expiration of the patent
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3/ The claims (art. 84 EPC)
oDefinition of the scope of the protection: the claims define the matter for
which protection is sought. = advantage for the inventor
oThe claim must be clear and concise and be supported by the description.
Claims are interpreted narrowly.
The content of the claims must be described in the description: balance

between society (description) and right holder (claims)
Claims are invalid if they are unclear. The description cannot be used to
complete the claims
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4/ The drawings (if necessary)
5/ The abstract:
-purpose of technical information only: use of patent databases
-Title of the invention, short description and a drawing (if useful)
6/ The search report
- List of documents included in prior art  important to determine the novelty

and the inventive step requirements.
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Preliminary opinion on the patentability
oOnly an opinion, not a decision
o3 options for the patent applicant
-Withdraw the application
-Continue the procedure
-Modify the application (only to limit the scope of protection; no extension or

supplement possible)
 Useful to check the real validity of a patent if granted in the case of a license
or a litigation.
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I. Legal framework
Section V: Ownership, transfer and licenses
I. Ownership of the patent

1. The true and real inventor is entitled to file the patent application
2. Distinction between natural right and social contract
o Natural right: the first to invent (former US system)
o Social contract: the first to file  disclosure of the invention
o EPC, article 60: first to file: increased legal certainty
3. Moral right (art. 62 EPC): real inventor can be mentioned on the

patent : no other rights  rights belong to the proprietor of the patent
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4. Multiple inventors
o Co-ownership of the patent
o Division of territories: independent proprietors of “national” patents
5. Automatic transfer of the right to apply for a patent in case of

employees inventions (depends on national law provisions)
o Invention made by the employee under the employment contract:

employer
o Invention made by the employee outside from the scope of his

functions but with the means of the employers : employer but
compensation for the employee
o Invention made by the employee outside from the scope of his

functions with his proper means : employee
6. Claim of the patent application (art. 61 EPC)
o Institution of proceedings against the applicant to claim the patent

application before national jurisdictions
o Automatic stay of the proceedings at the EPO once the patent

application has been published (temporary protection): issue: the
content of the patent application but loss of time
o End of the suspension: agreement of both parties or final decision

(no more appeal possible)  loss of the best years
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6. Claim of the patent application (art. 61 EPC)
o If the claim is successful, the new applicant may
(a) prosecute the European patent application as his own application in

place of the applicant;
(b) file a new European patent application in respect of the same invention
(but not larger than the former application); or
(c) request that the European patent application be refused.
I. Legal framework
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Section VI: Term of protection
I. Principle : 20 years as of the date of the filing of the patent application
>< date of the patent grant (effective rights) – Article 33 Trips
II. Supplementary protection certificates
1. Effect: extension of the patent term
2. For pharmaceutical products : Regulation 469/2009/EU
3. For plant protection products : Regulation 1610/96/EU
4. Purpose: compensate the loss of time to obtain the market approval
10 years – 5 years of patent application procedure = maximum 5 years

101
I. A patent is a national title which is valid for a limited time in a limited

territory
II. Duration : 20 years from filing date as long as renewal fees are paid
Date of filing Patent duration End of protection

(20 years from filing date)
Year
2008 2028
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Supplementary Protection Certificate SPC: extension of patent life for medicine

EU regulation 469/2009
Patent
Date of filing End of protection
Patent duration
(20 years from filing date)
Year
2008 2028 SCP

Market authorization
(Autorisation de mise sur le marché – AMM)
SCP
With a maximum of 5 years
I. Legal framework
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Section VII: Scope of patent rights
I. Patent right = Exclusive right for the commercial use of the invention
II. Distinction between product patent and process patent
 A patent on a product cover any commercial use of the product

whatever the process used to manufacture the product is.
Commercial use of the product: any use including the use in the
facilities of the company and the use as ingredient for a complex
product
 A patent on a process covers the use of the process and the product
produced by the patented process (but not the products produces
using other processes).
Product patent: the patent holder can prohibit
1. the manufacture
2. the offer
3. the marketing
exclusivity for exploitation
4. the use
5. the possession for a
commercial purpose
6.Importation exclusivity for importation
Of the patented product (whatever the process used is)
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Process patent: the patent holder can prohibit
1.The use of the process
2. the commercial exploitation of the product directly

produced by the patented process
« the product produced by the patented process »:
-New product (ex. vaccine against AIDS)  process

patent + product patent
-New result (freshness of the bread)  non-patentable

result : process patent only
III. Distinction between direct infringement and contributory

infringement
 Direct infringement: unauthorized use of the patented subject-matter
e.g. : unauthorized sale of the patented product
 Contributory infringement : commercial offer of a component of a

patented machine, manufacture, combination or composition, or a
material or an apparatus for use in practicing a patented process,
constituting a material part of the invention, especially made or
especially adapted for use in an infringement of such patent
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 Contributory infringement :
o not a staple article or commodity of commerce suitable for substantial

noninfringing use  no other condition
o a common article  mala fide must be proven (incitement to commit

infringement)
 Contributory infringement : The article must be especially made or

especially adapted for use in an infringement of the patent  Senseo
case
Distinction between
o Means necessary for the use of the

invention (water…)
o Means related to the inventive concept:

strictly related to the invention (mould)
Coffee pads: not new and multi-purposes: no

contributory infringement
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IV. Proof of the patent infringement
1. The patent holder must proof the infringement
2. Inversion of the burden of the proof
- if the subject matter of the patent a process for obtaining a product
- if the product obtained by the patented process is new;
- if there is a substantial likelihood between the patented product and the

product suspected of infringement
 The defendant must prove that the process to obtain an identical product
is different from the patented process.
111
3. Bona fide is not relevant but mala fide is important for
- Contributory infringement if the article is a common thing
- For damages: forfeiture of infringing material and goods and machine

used for infringement and profit resulting from infringement possible
only in case of mala fide.
4. Improvement to the invention is irrelevant
5. Similarities are more important than differences
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V. Obligations of the patent holder
1. Payment of the annual tax: irrevocable loss of the patent
2. Exploitation of the invention: compulsory license if no exploitation

of the invention including by importation during 3 years.
3. Art. 31 Trips - Tolerate compulsory licenses: use of the patent

without the authorization of the right holder but compensation
- Public health issue
- to permit the exploitation of a patent (“the second patent”) which

cannot be exploited without infringing another patent (“the first
patent”) if the invention claimed in the second patent involve an
important technical advance of considerable economic significance
I. Legal framework
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Section VIII: Limitations and exceptions
I. Private and non commercial use
E.g. : use by the State: not commercial but public
E.g. : use in the company facilities: private but commercial
II. Use for scientific research
See: Myriad Genetics (breast cancer)
III. Use on transportation means (ships, airplanes, cars, buses, etc.) for
the repair of the transportation mean >< importation
Section VIII: Limitations and exceptions
IV. The exhaustion theory
Territoriality principle: a patent is (almost) always a national right
 quid with products legally produced abroad?
Germany: exhaustion theory = there is only infringement if the product is

COMPLETELY outside of the right holder’s consent
Exhaustion theory = Consent theory: did the right holder consent?
Once the right holder has given his consent for a product, this product
cannot be considered to be an infringing good.
58

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10/29/2019

Chargé de cours à l’UCLouvain Avocat au barreau de Bruxelles

Chapter III: Patents

Section I: Patents legal framework

Chapter III: Patents

Section II: Origin and function of patents

IV. Function of patent law

- Patent is an incentive to innovate with technical inventions

Section II: Origin and function of patents

V. Patents in the 21st century (Source : WIPO IP indicators – 2013)

Section II: Origin and function of patents

V. Patents in the 21st century (Source : WIPO IP indicators – 2013)

Section II: Origin and function of patents

V. Patents in the 21st century

o Exponential increase in the number of patents

Patent is a strategic issue:

Chapter III: Patents

Section III: Subject matter of patents and

I. Subject matter of patents (criteria for protection)

Trip’s, article 27 and EPC, article 52:

European patents shall be granted for any inventions, in all fields of

Section III: Subject matter of patents and

Section III: Subject matter of patents and

1. An invention  categories of patentable inventions

Cover a new product: a material object comprising characteristics which are

Section III: Subject matter of patents and

- The produced product can be new  patentable product

- The produced product can be known  not patentable product

Section III: Subject matter of patents and

- The produced result is never patentable: no patent protection for

Section III: Subject matter of patents and

c) Application inventions: Inventions using well known means to produce

Section III: Subject matter of patents and

d) Combination inventions: Inventions using well known means to make

Section III: Subject matter of patents and

o Impossible to precisely define the invention: it something that we do not

o The invention is a rule

Section III: Subject matter of patents and

o Invention is a technical rule: a rule that uses natural forces

o Rules using intellectual forces are not patentable

o Methods for teaching, running a company, programming a computer,

Section III: Subject matter of patents and

o Rules using intellectual forces are not patentable

o A “technical rule” means a rule using natural forces in order to use a

o Technical means material >< concepts, ideas, methods = immaterial and

Section III: Subject matter of patents and

1. An invention = technical solution to a technical problem

Technical problem: typing rods are blocking if typing

Section III: Subject matter of patents and

1. Who may produce what ?

TYPING BALL (IBM)

Section III: Subject matter of patents and

o Invention is a creation; it cannot be a mere discovery

e.g. discovery of a law of nature (E=MC2)  not patentable

e.g. discovery of a new plant or animal  not patentable

Section III: Subject matter of patents and

o Discovery = description of something that exists in the nature

o Invention = human intervention on the nature to create something that

e.g. discovery of a new material on the moon that is resistant to extreme

e.g. use of this material to create a new oven = human intervention =

Section III: Subject matter of patents and

o Special case: biotechnologies. Directive 98/44/EC