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- Written by: Oliver Jeker
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Defensive publications – an often overlooked (and less expensive) alternative to patents
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- First published 13 December 2024
Securing a patent is often seen as the ultimate way for protecting innovation. A patent confers on its proprietor the right to prohibit others from commercially using an invention. This includes, amongst others, manufacturing, storage, offering, placing on the market, importing and exporting. However, pursuing and maintaining patents can be costly and time-consuming. Furthermore, in fast-moving fields, a technology may become obsolete until a patent is eventually granted.
Have you ever decided against patent protection, because an invention did not have enough commercial potential to justify the effort? Still, you wanted to keep the door open to use the respective technology in the future?
Then, a defensive publication might be the right choice for you.
A defensive publication is prior art which is put on purpose into the public domain to stop others obtaining a patent on the same invention.
But if you decided against going for a patent, why should you still see your patent attorney?
Here is why:
In case you later have to defend against a third party patent, providing evidence that your defensive publication actually was available to the public before the relevant date might become very difficult – for instance if it was simply published on your website. A patent attorney can help you to publish your defensive publication in the right way, so that no unpleasant surprises arise.
In your defensive publication, you need to present the invention in a way sufficient for it to unfold its prior art effect. Gaps might for instance lead to a situation where there is no enabling disclosure – and therefore possibly no prior art. A patent attorney can help you to choose the right wording and to present the required information, in order to be on the safe side.
If done properly, a defensive publication can be a powerful tool for protecting your business – for only a fraction of the cost of a patent.
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- Written by: Estefano Esparza
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A Day in the Life of a Patent Attorney Trainee in Zurich: My First Year in Patent Law
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- First published 04 December 2024
Introduction
Transitioning from electrical engineering to patent law has been an exciting and rewarding journey! As I near the end of my first year as a Patent Attorney Trainee at Rentsch Partner AG, I’d like to reflect on my experiences and share a glimpse into my daily responsibilities and learning opportunities.
Daily Responsibilities
Drafting Patent Applications
Under the guidance of a supervisor, I work on claims, descriptions, and drawings to transform innovative ideas into legally sound patent documents. This involves drafting in a way that ensures not only the patent is likely to be granted but also that the core idea and various embodiments of the invention are comprehensively covered in the scope of protection.
Handling Office Actions and Search Reports
I prepare high-level summaries for clients and draft replies to patent offices. This task deepens my understanding of substantive patent law, as it requires strong interpretation and argumentation skills to address the examiner’s objections effectively.
Learning European, Swiss and PCT Patent Law
One of the most exiting aspects of this role is the chance to deeply engage with the European Patent Convention (EPC), Swiss Patent Law, and the Patent Cooperation Treaty (PCT). It’s amazing to experience how theoretical knowledge aligns with practical application, especially as I prepare for the new European Qualification Examination also known as EQE (beginning in 2025). Being part of the first generation tackling this new system adds both a sense of challenge and accomplishment to the journey.
Guidance from Outstanding Patent Attorneys
I’m fortunate to learn from some of the most distinguished Patent Attorneys in Switzerland. Their expertise, strategic thinking, and profound understanding of patent law are unparalleled. I am incredibly grateful for their constructive feedback and high-quality supervision, which ensure I’m developing the skills to succeed in this field. Observing their methods has provided me with invaluable lessons on professional communication, writing, and strategic decision-making.
Formal Training and Studying
In addition to on-the-job learning, I participate in classes taught by experienced Patent Attorneys every two weeks in the evenings. These sessions cover substantive and procedural patent law, providing a structured foundation that complements my daily work. Importantly, they also serve as crucial preparation for the EQE and help me build a strong legal foundation for the future.
Balancing Family, Work and Study
Time management is absolutely critical in this phase of my career. Every day, I plan my goals carefully to ensure I stay on track with my workload and study program. Balancing spending quality time with my family, finishing work assignments on time and preparation for the EQE, requires focus and discipline but it’s deeply rewarding.
Looking Ahead
Although this year has almost come to an end, it feels like the time has flown by. The learning curve has been incredibly steep, but every challenge has been an opportunity to grow. As I continue working toward becoming a European and Swiss Patent Attorney, I’m excited to take on more responsibilities and deepen my knowledge, all while contributing to the protection of cutting-edge innovations.
Your Turn
Are you working in IP or preparing for the EQE? Let’s connect – I’d love to hear from you how you are navigating this fascinating field!
The pictures show Estefano Esparza at work, in the middle with Matthias Salcher, Senior Associate at RENTSCH PARTNER AG.
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- Written by: Mathias Ingold
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The term «patent» contains the latin verb «patere», which means «to be open or visible or known». Thus, an invention described in a patent application becomes known to the public through publication (in German: Offenlegungsschrift) by the Patent Office. As a reward, the Patent Office may grant a patent, which defines a legal monopoly for your invention in a country for a maximum of 20 years. A patent can only be granted when strict formal and substantial patentability criteria are fulfilled. In particular, the patent claims, that define the scope of the monopoly, must be novel and inventive over all prior art, i.e. over all technical information that has been published in any manner in any country before the filing date of the patent application at the Patent Office.
Someone unfamiliar with patents may believe that owning a granted patent gives the right to market and sell a product that contains the patented invention. However, this is not the case. The reason is that the monopoly conferred by the patent claims after grant is not defined as a positive right for the patent owner to use the invention, but as a negative right to forbid third parties to use the invention in their products.
Making use of a patented invention encompasses manufacture, offer, sale or import of a product implementing the invention. Thus, in order to manufacture, offer, sell or import a product, the product shall be free of third party patents. For this purpose, own patents are legally not relevant. Rather, a freedom to operate patent search and analysis (FtO) may be made to identify critical third party patents. In case any part or aspect of the product would come into conflict with a valid and enforceable third party patent (patent infringement), a license of the third party patent would be needed, or the product should be modified to avoid the infringement.
Example: The prior art is a car. The patented invention is a car with a radio with antenna (basic patent), and an embodiment with antenna embedded in a window glass also falls under the granted claims (even if not mentioned explicitly). The basic patent owner and producer wants to manufacture, offer, sell or import cars with such an antenna embedded in a window glass. However, if a third party owns a more specific, later filed patent on such an embodiment of a window-embedded antenna (dependent patent), the third party can file an infringement lawsuit with the aim to legally stop the basic patent owner and producer to manufacture, offer, sell or import such cars with window-embedded antenna. An infringement lawsuit may equally be based on any other third party patent that covers any other inventive feature used in the cars.
In conclusion:
- An invention to be patented will be published and thus can not be kept secret.
- A granted patent does not give the patent owner the positive right to use the invention, but the negative right to forbid third parties to use the invention.
- Before developing or launching a new product, a freedom to operate search and analysis (FtO) allows to assess and avoid infringement of third party patents.
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- Written by: Fabio Versolatto
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Register an invention as an intellectual property (IP) right or keep the innovation as a trade secret?
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- First published 29 October 2024
Register an invention as an intellectual property (IP) right or keep the innovation as a trade secret? What is the difference and what speaks for and against each option?
What is a registered IP right?
A registered IP right is, for example, a patent, which – in return for disclosure of the invention and payment of fees – grant the owner an exclusive right for a limited period (usually 20 years from filing). Namely the (negative) right to prohibit third parties from commercially using the same or an equivalent invention. This means the deal is: sufficient disclosure to the patent office including fee payment in exchange for a temporary legal monopoly.
What is a trade secret In contrast?
A trade secret is a technical or commercial information that is:
- neither generally known nor publicly or (at least) readily accessible to the public,
- has a commercial (economic) value because it is secret and
- has been made subject to reasonable steps – particularly adequate technical, organizational, and legal measures – to keep it secret.
Trade secrets can be both technical innovations and commercial (business) information.
- They include (positive) knowledge and experience such as
- new inventions (which are not patented), research & development data, improvements of products or processes, at present unannounced products, processes or other creative ideas including the related technology, drawings, models, prototypes, sketches, plans,
- As well as commercially sensitive distribution or manufacturing information such as customer lists, supplier lists, non-public financial information or spreadsheets, strategy, and operations (valuable insight).
- But also “negative” knowledge and experience such as failed projects or negative results from which the competition could learn and save efforts by avoiding unpromising research paths.
What this information always has in common is that it gives the owner a competitive advantage (cf. commercial value) over its competitors, who would be interested and would like to have access to it. That is the vital point in the end whether a trade secret exists or not.
Against this background, with trade secrets, it is the other way around: No disclosure (this means secrecy) and potentially unlimited duration of protection, provided and insofar as the information in question actually remains secret. It is therefore merely (but still) a de facto protective situation (and ownership), albeit without exclusivity rights as with patent rights. The owner of a trade secret must not disclose the respective information without confidentiality obligations sufficient to protect the trade secret.
If secret information leaks out or if a third party happens to create the same innovation in parallel, be it by lawful discovery or reengineering, the supposed ‘glory’ may be over. If a product is freely and publicly available on the market, there is in principle no general ban on reengineering or imitation in competition, subject to any contractual, competition law or, where applicable, IP restrictions such as patent or copyright law. A company should be aware of this and protect its trade secrets accordingly (s. below).
What happens in the event of violations (remedy for infringement or breach)?
In case of the infringement of patent rights, the owner has the option to file a civil action, for example, for injunctive relief (prohibition), removal and financial compensation (as the case may be), whereby the claims of the patent (forming the defined scope of protection) are compared with the individual features of the contested object (such as a device or a process). In practice, unfair competition or criminal law play a rather subordinate role in patent law.
In case of a breach of laws for the protection of trade secrets, such as a misappropriation or divulgation, the aggrieved person can file a civil law action or initiate criminal proceedings with the prosecution authorities (as the case may be). As mentioned, the protection does not consist of an exclusive right against every third party, but of specific protective provisions in the law against unfair or criminal conduct aimed at circumventing safeguard measures to protect trade secrets. Protection of trade secrets usually stands and falls with the ability to prove that the commercially valuable information was previously available to the claimant, was secret, was protected against unauthorized access and publication and ultimately passed to the violating party without authorization or was misappropriated by the latter. This can be a complicated and extensive process in terms of evidence.
Is trade secret protection always cheaper than patent protection?
You cannot say that, or at least not in every case. Especially as it is clear from the above that every company wishing to invoke trade secret protection should define and record a corresponding internal policy with respect to trade secrets, that defines which sensitive information is protected and how, in order to be able to prove this (if necessary) in the event of a dispute. But definition and recording alone are not enough; the company must also ensure that employees adhere to it, when they deal internally with other employees (maybe without need-to-know) or externally with business partners, collaboration/development partners, freelancers, subcontractors, universities, customers or suppliers.
In addition to contractual (legal) safeguards in employment, non-disclosure, development cooperation, supply, and other agreements, such policy shall also include further organizational and technical measures in everyday business such as checklists for onboarding and offboarding staff, regular/periodic employee training, technical or physical access restrictions, labeling requirements and confidentiality levels, code word or password protection systems, cyber security measures and much more. This also causes internal costs.
When should which option be chosen? What speaks for and what against trade secrets?
There is hardly a right or wrong answer to this question or a response that fits any situation. As usually in the case of law, it depends on the specific individual case at hand.
First, it should be noted that a combination of both approaches (patent right and trade secret in parallel), is possible and even common in practice, depending on the technical solution (be it product, method, or service). One could think of a patent application and surrounding trade secrets: A patent application could be filed for the basic technology (technical teaching), where as much as necessary but as little as possible of the technical details is published (to get the patent granted). By way of contrast, the details required to carry out or exploit the patented invention as optimal as possible (customer needs) on the other hand, could be kept secret and deliberately not included in the patent specification or proceedings. This could include particularly the most suitable accompanying circumstances and parameters (in case of bandwidths), preferred supplier materials, precise recipes, additional professional knowledge and practical experience of employees about the behavior of certain materials, etc. Such practical advantages over the competition could well remain trade secrets.
Another reason for trade secret may be that the innovation in question is for some reason not patentable or very difficult to patent. Or if the money for legal enforcement of patents were lacking in the long term. However, it should be borne in mind that a patent has even more and different values than the mere assertion of defense claims against third-party infringers. For example, the defensive effect or the nature as an intangible asset. It is also conceivable that if a patent application is not filed by the owner of a respective trade secret, someone else or even a competitor may make the same or at least a similar invention and then file a patent application for it. Unpleasant.
Finally, If an infringement by third parties is easy to detect and prove in practice, this speaks more in favor of patent right. In this case, the features of the challenged object can be compared with the patent claims. If, on the other hand, infringement by third parties is not easily recognizable or difficult to recognize and prove, the reverse applies. For example, if a product can hardly be re-engineered or it is unclear whether a product has been manufactured or treated using a certain process.
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- Written by: Elisa Wall
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How does the patent landscape reflect current quantum technology (QT) developments?
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- First published 29 October 2024
Many technologies such as semiconductor electronics, lasers and magnetic resonance imaging involve quantum effects. Recently, «second generation» quantum technologies (QT) harnessing quantum phenomena like entanglement and superposition - in particular in quantum computing and sensing – are progressing from academia to industry.
1. The EPO’s Insight Reports
Four out of eleven insight reports published by the European Patent Office (EPO) relate to Q simulation, Q computing, QT and space, and Q metrology and sensing. These reports highlight the following:
- Players with the most patent filings are corporations, growth-stage tech companies and research institutions from the USA, Europe, China, and Japan.
- In particular, in Q computing and Q simulation, next to growth-stage tech companies and US universities, the largest corporate applicants include IBM, Intel, Nokia, Microsoft, Hitachi and Google, while in QT and space and Q metrology and sensing, prominent players include Chinese government research institutes and the US industry.
- Collaboration between universities and industry is particularly strong in these fields.
- The number of patent filings is still relatively low but sharply increasing: in Q computing for example, the number of newly published patent families grew by 15 to 30% per year. For comparison, the yearly growth of EPO patent filings in all technical areas was between -1 and 5% in recent years.
2. Patenting in QT
Businesses taking part in this race and companies in adjacent markets should take strategic decisions on their intellectual property.
A technical development can be patented or alternatively kept as a trade secret. Being able to prevent competitors from copying the invention speaks in favor of patenting, while nearly impossible reverse engineering may suggest keeping the technology secret instead.
Feel free to get in touch in case of questions.